First Denial Based on USPTO’s New Discretionary Denial Factors

Earlier this year, Chief Judge Boalick issued guidance on the USPTO’s recission of “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation,” explaining how the Fintiv factors should be addressed going forward. Shortly after, Acting Director Stewart issued a memorandum titled “Interim Processes for PTAB Workload Management” that provided additional non-Fintiv discretionary factors that should be assessed to determine whether discretionary denial of an IPR petition is appropriate.

Since the memorandum’s release, there have been 11 decisions involving requests for discretionary denial; seven requests have been granted and four have been denied. 

In a recent decision, Acting Director Stewart exercised her discretion to deny institution in five proceedings, explaining that “Petitioner’s awareness of patent owner’s applications and failure to seek early review of the patents favors denial.” iRhythm Techs., Inc. v. Welch Allyn, Inc., IPR2025-00363, -00374, -00376, -00377, -00378, Paper 10, 3 (P.T.A.B. June 6, 2025). Acting Director Stewart found that “settled expectations [of the parties] favor[ed] denial of institution” because “one of the patents has been in force since as early as 2012 and Petitioner was aware of it as early as 2013.” Id. The decision found that Petitioner had “cited the then-pending application that issued as the challenged patent in an Information Disclosure Statement Petitioner filed in its own patent application.” Id. Based on this analysis, institution was denied. This Welch Allyn decision is the first denial based on the newly identified non-Fintiv factors.

Acting Director Stewart’s other decisions on Requests for Discretionary Denial since the implementation of the new procedure are all Fintiv-focused, being decided based on proximity to trial. A few of these decisions include:

• Ericsson Inc. v. Procomm International Pte. Ltd., IPR2024-01455, Paper 15 (P.T.A.B. May 16, 2025) (granting request for discretionary denial where district court trial ends “substantially before” (i.e., nine months before) PTAB’s final decision);
• Arm Ltd. v. Daedalus Prime, LLC, IPR2025-00207, Paper 10 (P.T.A.B. May 16, 2025) (granting request for discretionary denial where district court trial was set five months before projected date of PTAB’s final decision, and it was “unlikely that a final written decision in th[e] proceeding w[ould] issue before district court trial occurs”);
• Amazon.com, Inc. v. NL Giken Inc., IPR2025-00250, -00407, Paper 14 (P.T.A.B. May 16, 2025) (denying patent owner’s request for discretionary denial and referring case to Board for merits determination where Board’s “final written decision … w[ould] likely issue [six months] before the district court trial occurs”); and
• Twitch Interactive, Inc. v. Razdog Holdings LLC, IPR2025-00307, -00308, Paper 18 (P.T.A.B. May 16, 2025) (denying request for discretionary denial and referring case to Board for merits determination where projected trial date was “significantly after” (i.e., seven months after) projected final written decision date).

By Erik Halverson, Devon Beane, Rebekah Hill and Jared Lund