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Recent actions from the USPTO have engendered a great deal of discussion among the bar practicing before the Patent Trial and Appeal Board. On February 28, 2025, acting Director Stewart rescinded<\/a> former Director Vidal\u2019s Guidance Memorandum<\/a> for handling discretionary denials in inter partes review proceedings before the Board. On March 24, 2025, Chief Judge Boalick issued a Guidance Memorandum<\/a> on the rescission. On March 26, 2025, Director Stewart issued a memorandum on an interim procedure in which institution decisions are bifurcated between discretionary considerations and merits and other non-discretionary statutory considerations. Here, we examine the potential effects of Director Stewart\u2019s rescission and the subsequent Boalick Guidance on post-grant proceedings. We will examine Director Stewart\u2019s Guidance in a subsequent post.<\/p>\n Rescission of the Vidal Memo<\/em><\/strong><\/p>\n In rescinding the Vidal Guidance, the USPTO restored the precedence of Fintiv<\/em><\/a> and Sotera<\/em><\/a> without modification, specifically identifying those two Board decisions in its rescission announcement. The USPTO did not provide any comment.<\/p>\n The Boalick Guidance<\/em><\/strong><\/p>\n The Boalick Guidance clarifies how the Board will approach petitions for post-grant reviews going forward, including but not limited to those filed after the acting Director rescinded the Vidal Guidance.<\/p>\n Rescission of the Vidal Guidance does not apply to instituted cases that are outside the timescope for rehearing or Director Review of an Initial Determination (ID) on institution. Rescission does apply to any case where institution has not been determined, or any case where a request for rehearing or Director Review of the ID was timely filed and pending. \u201cAbsent extraordinary circumstances,\u201d the Board will not revisit IDs otherwise.<\/p>\n However, it is unclear what would constitute \u201cextraordinary circumstances.\u201d For example, would reviews instituted based solely on the submission of a Sotera<\/em> stipulation and with no evaluation of the Fintiv<\/em> factors constitute an \u201cextraordinary circumstance?\u201d We revisit this question below in our discussion of Samsung v. Maxell<\/em>.<\/p>\n In addition, and contrary to the Vidal Guidance, the Boalick Guidance instructs application of the Fintiv<\/em> factors to proceedings before the International Trade Commission (ITC). Also contrary to the Vidal Guidance, the Boalick Guidance states that a Sotera<\/em> stipulation is highly relevant and should be considered in balancing the Fintiv<\/em> factors, but will not be dispositive. Finally, and contrary to the Vidal Guidance, compelling merits of a given IPR petition will not be dispositive in the Board\u2019s Fintiv<\/em> analysis.<\/p>\n Consistent with the Vidal Guidance, the Boalick Guidance allows the Board to consider median time-to-trial and judge case load, without regard for whether such evidence is presented by the parties. The Board\u2019s Fintiv<\/em> analysis may include \u201cany evidence\u2026that bears on the proximity of the district court\u2019s trial date or the ITC\u2019s final determination target date, including median time-to-trial.\u201d<\/p>\n The Potential Effects of Rescinding the Vidal Guidance<\/em><\/strong><\/p>\n One of the most discussed aspects of the Vidal Guidance was its instruction to consider whether a petition\u2019s merit is compelling when Fintiv<\/em> Factors 1 through 5 indicate that the Board should exercise its discretion to deny the petition. Compelling merits could override the remaining Fintiv<\/em> factors. The rescission appeared to negate that instruction. For example, under the Boalick Guidance, it is clear that the Board may deny institution even in the face of a petition with compelling merits. Such denial would leave the determination of validity solely in the hands of a district court or jury, and would prevent administrative patent judges (APJs) who are familiar with patent law and technology, from adjudicating validity.<\/p>\n Additionally, the rescission allows the Board to deny institution even when the petitioner files a Sotera<\/em> stipulation, agreeing not to present in district court litigation any invalidity challenges that are or could have been presented to the Board. Such a denial may be a missed opportunity to reduce litigation costs, as review by the Board could, for example, simplify invalidity contentions and expert opinions, reduce the number of dispositive motions, and reduce trial time.<\/p>\n A third effect of recission is consideration of time to trial. Fintiv<\/em> Factor 2 specifically identifies \u201cthe court\u2019s trial date\u201d as the date to be considered against the Board\u2019s projected statutory deadline. The Vidal Guidance required the Board to consider median time-to-trial for the relevant district, as well as \u201cnumber of cases before the judge in the parallel litigation and the speed and availability of other case dispositions.\u201d Vidal Guidance at 9. This approach took into account the realities of litigation by recognizing that trial dates slip routinely. If Fintiv<\/em> Factor 2 is strictly interpreted, the rescission could remove median time-to-trial and the district court judge\u2019s case load from consideration, forcing the Board instead to consider an artificially early trial date and prompting discretionary denial. This again misses an opportunity to reduce litigation costs, and fails to leverage the legal and technical expertise of APJs.<\/p>\n Recent Examples Regarding the Current Analysis<\/em><\/strong><\/p>\n Petitioners and Patent Owners are already starting to see the effects of the rescission, and the Boalick Guidance. Here are some examples.<\/p>\n Here, we have a PGR proceeding that was instituted over two years after its petition was filed. It is entirely possible that this PGR finally was instituted because of the Vidal Guidance. After initially denying institution<\/a> in June 2021, the Board instituted PGR<\/a> on April 7, 2022, followed one day later by the jury verdict that the challenged claims were valid on the same grounds presented in the petition. Because of the jury verdict, in July 2022 the Board denied institution<\/a>. However, the Precedential Opinion Panel then required the Board to review the merits without considering the jury verdict. The Board then found compelling merits. Pursuant to the Vidal Guidance, the Board re-instituted review<\/a> in February 2023.<\/p>\n This resulted in a final written decision that invalidated all challenged claims, contrary to what a jury found in the parallel district court proceeding on identical grounds as those in the petition<\/em><\/strong>\u2014written description, enablement, and anticipation by the same prior art. The patent owner appealed to the Federal Circuit. Less than one year later, the Vidal Guidance was rescinded.<\/p>\n The Board instituted review<\/a> based solely on the petitioner\u2019s submission of a Sotera<\/em> stipulation, without applying any of the other Fintiv<\/em> factors. In early January 2025, the patent owner requested Director Review<\/a> of institution, but the Director denied<\/a> the request. After rescission of the Vidal Guidance, the patent owner requested Director Review a second time<\/a>. The timing of the request was outside of the filing allowances established by the Boalick Guidance but was submitted before the Boalick Guidance. The Director Review request is pending. There are other, similar cases, including Apple v. Masimo<\/em> (IPR2024-00244), Motorola v. STA Group<\/em> (IPR2023-01295), and Provisur v. Weber<\/em> (IPR2024-00235).<\/p>\n Petitioner submitted a Sotera<\/em> stipulation and, as a result, the Board granted<\/a> the petition in February 2025 after weighing the other Fintiv<\/em> factors. In early March 2025, immediately after the rescission of the Vidal Guidance, patent owner requested Director Review of the institution decision. On March 28, Director Stewart vacated the institution decision and denied<\/a> the petition. The Director noted the district court\u2019s and the parties\u2019 substantial investment in the litigation (Fintiv<\/em> factor 3) (the parties having already served extensive contentions and opening and rebuttal expert reports, conducted depositions, and the Court having held a claim construction hearing and construed disputed claim terms). The Director also noted that the scheduled trial date was eleven months before the statutory deadline for the final written decision (Fintiv<\/em> factor 2). Additionally, the Director identified significant overlap between invalidity issues at the Board and in district court (Fintiv<\/em> factor 4), despite the Sotera<\/em> stipulation\u2014the defendant (being one and the same as the petitioner) was putting forth invalidity arguments in the district court that combined prior art asserted in the petition with system prior art (which is not available in IPR proceedings). As such, the IPR no longer could function as a \u201ctrue alternative\u201d to the district court proceeding.<\/p>\n Stay tuned for Part II of this discussion, in which we will take up the new Patent Trial and Appeal Board procedures for briefing of discretionary denials.<\/p>\n
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Recent actions from the USPTO have engendered a great deal of discussion among the bar practicing before the Patent Trial and Appeal Board. On February 28, 2025, acting Director Stewart rescinded former Director Vidal\u2019s Guidance Memorandum for handling discretionary denials in inter partes review proceedings before the Board. On March 24, 2025, Chief Judge […]<\/p>\n","protected":false},"author":1,"featured_media":198146,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[97],"tags":[14675,76330,55994,76329,3774,8605,3480,1638],"dealstore":[],"offerexpiration":[],"class_list":["post-198145","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-legal","tag-bread","tag-crumbspart","tag-denials","tag-discretionary","tag-follow","tag-leaves","tag-read","tag-tea"],"yoast_head":"\n\n
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