In May 2020, the PTAB panel in Apple Inc. v. Fintiv, Inc. (IPR2020-00019) denied institution of Apple’s petition in view of the advanced state of a parallel district court litigation and set forth six non-exclusive factors to be considered when a patent owner requested that the PTAB deny institution based on this ground. Those six factors would become known as the Fintiv factors and are:

1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted;
2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision;
3. investment in the parallel proceeding by the court and the parties;
4. overlap between issues raised in the petition and in the parallel proceeding;
5. whether the petitioner and the defendant in the parallel proceeding are the same party; and
6. other circumstances that impact the Board’s exercise of discretion, including the merits.

After the Fintiv decision, discretionary denials in view of parallel district court proceedings spiked considerable. 

In June 2022, then-USPTO Director Kathi Vidal issued a memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (the “Interim Guidelines”) in response to this spike in discretionary denials. The Interim Guidelines stated that a petition would not be denied:

1. based on a parallel U.S. International Trade Commission (ITC) proceeding;
2. when a petitioner stipulates not to pursue in the parallel litigation the same grounds of invalidity as raised in the petition or any ground that could reasonably have been raised in the petition (referred to as a “Sotera stipulation” based on a PTAB decision by that same name); or
3. when a petition present “compelling evidence” of unpatentability.

The Interim Guidelines also recognized that a court’s scheduled trial date, a key factor in Fintiv discretionary denials, is not always a good indicator of when trial will actually occur. Accordingly, the Interim Guidelines allowed parties to present evidence of the median time-to-trial statistics for civil actions in the district court where the parallel litigation was pending.

After the Interim Guidelines, the pendulum swung back against discretionary denials with a notable decline in discretionary denials following thereafter.

On February 28, 2025, the USPTO issued an unsigned notice stating that the Interim Guidelines are rescinded and instructed parties and practitioners to again refer to the Fintiv and Sotera decisions when determining whether to deny institution based on a parallel proceeding.

The USPTO’s decision to rescind the Interim Guidelines is expected to increase the number of discretionary denials by removing the safe harbors for petitioners previously available under the Interim Guidelines. But it remains unclear how PTAB panels will address requests for discretionary denials where the parties’ arguments were submitted in view of the Interim Guidelines but were published after their rescission. The first such decisions are now being published and shed some early light on this question.

In Hulu LLC v. Piranha Media Distribution, LLC (IPR2024-01253), published March 4, 2025, the panel cited the USPTO’s Interim Guidelines before declining to deny institution based on the parallel proceeding. This decision was likely authored prior to the USPTO’s February 28, 2025 notice rescinding the Interim Guidelines and was simply published after without revision.

The first PTAB institution decision addressing the USPTO’s rescission of the Interim Guidelines was Savant Technologies LLC v. Feit Electric Company, Inc. (IPR2024-01357), published March 5, 2025. In this case, patent owner requested that the PTAB deny institution based on two related litigations in different districts—the Eastern District of Kentucky and the Northern District of Texas.

In considering the Kentucky litigation, where no trial date had been set, the board considered the parties’ proffered median time-to-trial statistics and found that the trial would likely occur “well after” a final written decision would issue.

Notably, in considering the Texas litigation, which was scheduled for trial on January 20, 2026, the panel noted that “[w]hen the parties filed their papers, the USPTO was following now-rescinded guidance” that allowed parties to present median time-to-trial statistics. Nevertheless, the panel stated that the time-to-trial evidence was not relevant “because we agree with Patent Owner that the time-to-trial statistics are congruent with the scheduled trial date.” In particular, the parallel litigation was schedule for trial on January 20, 2026, while the average time to trial in the Northern District of Texas suggested an earlier trial date in December 2025. After considering the other Fintiv factors, including the merits of Petitioner’s arguments, the panel instituted the IPR.

Another decision published on March 5, 2025, Mobileye Global, Inc. v. Facet Technology Corp. (IPR2024-01110), also addressed patent owner’s request for discretionary denial. In that decision, the panel applied the Fintiv factors without any mention of the Interim Guidelines, which is notable because each party filed two post-preliminary response replies addressing the Interim Guidelines. After considering the Fintiv factors, the panel instituted IPR in this matter.

As can be seen from this small sample of decisions, there is no uptick in discretionary denials since the USPTO rescinded its Interim Guidelines. However, as shown by the Savant Technologies’s decision, the PTAB may continue to consider median time-to-trial statistics in the absence of a trial date but will likely disregard such evidence when a trial date is set. Accordingly, at this time, we suggest that parties continue to cite median time-to-trial statistics in the absence of a trial date but should be prepared for the PTAB to disregard such evidence if or when a trial date is set.