The new administration is quickly making more significant changes at the Patent Trial and Appeal Board (“PTAB”). Late last week, Patent Office leadership issued two documents in as many days that could dramatically affect PTAB operations. These documents come less than a month after the USPTO rescinded on February 28, 2025 former Director Vidal’s 2022 memorandum regarding PTAB’s discretionary denials, and less than a week after PTAB’s Chief Judge Boalick issued his own memorandum addressing PTAB procedures after the rescission of Director Vidal’s memorandum.

The first of these new documents from last week is an email¹ encouraging administrative patent judges (“APJs”) to accept voluntary separation incentive programs (“VISP”) and voluntary early retirement authority (“VERA”) before a reduction in force (“RIF”) layoff sometime after April 17. The size of the layoff is unknown, but it could be substantial, as could be acceptance of VISP and VERA due to dissatisfaction with a return to office (“RTO”) mandate.

The second is a memo, titled “Interim Processes for PTAB Workload Management,”² establishing a complicated interim process to bifurcate discretionary denial issues in inter partes and post-grant reviews (“IPRs” and “PGRs”). This memo seemingly acknowledges the RIF by shifting at least some of the PTAB’s discretionary denial analysis to the Director, or it implies that the Director will deny more petitions to limit the burden on a PTAB with fewer APJs. However, the memo also states that the Director will consult with “at least three” APJs when deciding whether to use her discretion to deny institution. It is unclear how bifurcating discretionary denial decisions will reduce the PTAB’s workload, except that a decision to discretionarily deny a petition could moot most of the substantive analysis of the prior art.

The new process is complex. It allows the patent owner (“PO”) to file a brief “limited to 14,000 words”—the same length as an IPR petition—within two months of the notice of filing date. Petitioners may file a similar response within one month of PO’s paper, i.e., when the PO’s preliminary response is due. Further briefing could be allowed upon a showing of good cause. Sometime later the Director will decide whether to deny the petition or to refer it to a three-APJ panel for full substantive consideration of institution.

The factors informing the Director’s determination to discretionarily deny institution will depend on: (1) prior precedential decisions colloquially referred to as Fintiv (relation to other proceedings), General Plastics (serial petitions), and Advanced Bionics;(similarity to prior arguments);³ (2) the ability of the PTAB to comply with pendency goals for ex parte appeals, its statutory deadlines for AIA proceedings, and other workload needs⁴; and (3) the following new factors:

• Whether the PTAB or another forum has already adjudicated the validity or patentability of the challenged patent claims;
• Whether there have been changes in the law or new judicial precedent issued since issuance of the claims that may affect patentability;
• The strength of the unpatentability challenge;
• The extent of the petition's reliance on expert testimony;
• Settled expectations of the parties, such as the length of time the claims have been in force;
• Compelling economic, public health, or national security interests; and
• Any other considerations bearing on the Director's discretion.

Certain factions of stakeholders have been advocating for factors, such as “settled expectations,” for years, seeking a “quiet title” to patent rights. The “strength” of the challenge factor, on the other hand, seemingly resurrects the recently rescinded⁵ “compelling merits” factor established by the previous Director.⁶ These new factors apparently reenforce the idea that the Director is more likely to deny petitions in “rocket docket” jurisdictions, such as the International Trade Commission and the Eastern District of Texas. However, the new memo maintains the important relevance of Sotera⁷ stipulations that have proven to be a useful tool in avoiding discretionary denial if the Petitioner agrees to not raise prior-art-based invalidity in the parallel proceeding. These factors have been debated, changed, rescinded, and resurrected for years, and the uncertainty appears likely to continue.

Uncertainty seems to be the only certainty at this time for the PTAB. How these changes will ultimately affect particular IPRs or PGRs depends on currently available decisions and the facts of individual cases. For example, the Acting Director very recently reversed institution of four IPRs based on the revised guidelines.⁸ It is unclear whether parties can rely on settled expectations of even instituted IPRs. Attorneys at Dentons have participated in PTAB rulemaking and policy for years and stand ready to advise clients on the latest changes, including discretionary denial and other aspects in this increasingly complex venue. Changes to PTAB practice seem likely given a new soon-to-be-confirmed Director, layoffs, fee increases, and coordination with related proceedings. Therefore, please contact the authors with any questions concerning the current state of PTAB practice.

1. https://www.law360.com/articles/2314328/ptab-judges-told-to-get-ready-for-layoffs-. ↩
2. https://www.uspto.gov/sites/default/files/documents/InterimProcesses-PTABWorkloadMgmt-20250326.pdf?. ↩
3. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential); Gen. Plastic Indus_ Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (Sept. 6, 2027) (precedential as to § II.B.4.i); Advanced Bionics, LLC v. MED-EL Elektromedizinische Gertite GmbH, IPR2019- 01469, Paper 6 (Feb. 13, 2020) (precedential). ↩
4. “In prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316 ↩
5. https://content.govdelivery.com/accounts/USPTO/bulletins/3d4a99f. ↩
6. https://www.uspto.gov/sites/default/files/documents/interim_proc_discretionary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. ↩
7. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (Dec. 1, 2020) (precedential as to § II.A). ↩
8. Motorola Solutions Inc. v. Stellar LLC, IPR2024-01205, IPR2024-01206, IPR2024-01207, IPR2024-01208, Paper 19 (March 28, 2025). ↩