In a move that’s sending ripples through the patent world, Acting USPTO Director Coke Stewart has officially rescinded the June 2022 Vidal Memorandum. That memo had put significant limits on the PTAB’s ability to issue discretionary denials of inter partes review (IPR) petitions — especially in cases where there was parallel district court litigation. With its repeal, we’re likely to see a major uptick in those denials as the PTAB regains broader discretion.
So, what does this mean for patent stakeholders?
Essentially, the PTAB can once again lean heavily on the Fintiv framework — a set of six factors that guide whether an IPR petition should be denied when there’s overlapping litigation in district court. These factors consider things like how soon a district court trial is scheduled, how much investment has already gone into the case, and whether the same issues are being raised in both forums. In short: if a case is already moving forward in court, the PTAB might decide it’s better not to get involved.
This isn’t the first time we’ve seen this pendulum swing. Under former Director Kathi Vidal, the USPTO introduced guardrails that made it easier for petitioners to avoid discretionary denials — especially by submitting a Sotera stipulation (which limits their district court defenses to avoid duplication) or showing “compelling evidence” of unpatentability. Those rules made the IPR pathway more predictable and accessible.
But with those protections now gone, both patent owners and petitioners will need to adjust their strategies. Patent holders are likely to push their district court cases forward faster, using quick trial dates to argue against IPR institution. Petitioners, on the other hand, may need to file IPRs earlier and consider requesting early stays in court to minimize Fintiv-related risks.
The takeaway? PTAB policy is, once again, in flux — and those navigating patent disputes need to stay agile. The rules around discretionary denials may be shifting, but one thing remains clear: timing, coordination, and strategy have never been more critical.