PTAB Rescinds Discretionary Denial Memorandum

by | Mar 3, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Ashvi Patel and Matt Johnson –

On Friday, the USPTO rescinded its June 21, 2022, guidance memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.”  That memorandum discussed Office policy for discretionary denials in view of co-pending litigation.

As we covered here, the memorandum stated that a petition would not be discretionarily denied when:

  • “a petition presents compelling evidence of unpatentability”;
  • “a request for denial under Fintiv is based on a parallel International Trade Commission proceeding”; or
  • “a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.”

The interim guidance added that “the PTAB will consider the speed with which the district court case may come to trial and be resolved” when analyzing Fintiv factor two.

The email rescinding the memorandum further stated, “To the extent any other PTAB or Director Review decisions rely on the Memorandum, the portions of those decisions relying on the Memorandum shall not be binding or persuasive on the PTAB.”

We will continue to report on developments.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.