The Fintiv Pendulum Swings Again: More Discretionary Denials Coming Soon

Abstract

This article examines the USPTO’s recent rescission of the June 2022 Vidal memorandum, signaling a significant policy shift in the Patent Trial and Appeal Board\u27s (PTAB) approach to discretionary denials of inter partes reviews (IPRs). The rescission reinstates the precedential status of Apple Inc. v. Fintiv, Inc. and its six-factor test for evaluating whether to deny IPR institution based on parallel district court litigation. The article traces the evolution of discretionary denials under the America Invents Act (AIA), from their initial limited application to the expansive approach under Director Iancu, the subsequent narrowing under Director Vidal, and now the anticipated return to broader PTAB discretion under President Trump. This policy shift will likely increase discretionary denials and incentivize patent owners to accelerate district court proceedings to avoid PTAB review. The article contextualizes this change within the broader pendulum of patent policy and examines its implications for patent litigation strategy, highlighting how it may redirect access to what has become America\u27s most active patent litigation forum