Foley Hoag LLP: Reshaped IPR landscape: Narrower estoppel and fewer new cases

The IPR estoppel statute doesn’t prevent an unsuccessful IPR from using non-literature prior arts to defend themselves during infringement proceedings. This freedom to use prior art that is not literature remains even if a prior IPR could have reasonably supported the same or similar invalidity argument based on a printed publication or patent. The Patent Trial and Appeal Board has broad discretion to deny instituting IPRs when there is a district court case or International Trade Committee proceeding that is competing, even if the Petitioner provides compelling evidence of non-patentability. A prior US Patent & Trademark Office policy guidance on the PTAB’s discretion to institute IPRs in the event of a competing district-court case has been rescinded. The Fintiv factors have also been reinstated.
In recent years, there have been two major changes in IPR practice. Since February 2025, a Federal Circuit panel decided an important case on IPR estoppel on May 7, and the Acting USPTO director has used a new Director-led process in order to deny IPR establishment under the Fintiv factors. Below, we discuss both of these changes in greater detail.

• Estoppel
• IPR estoppel is only available if a petitioner challenges patent claims “on a ground that could be raised under section 102 or 103 and
• only on the basis of prior art consisting of patents or printed publications

.” (35 U.S.C. SS311(b)) (emphasis added). The definition of prior arts, implicitly found in SS102 is broader than patents or printed publications and includes situations such as “claimed inventions were… on sale, in public use, or otherwise accessible to the public before effective filing date of claimed invention” (35 U.S.C. SS102(a)(1)). Other than that, the grounds of instituting IPRs is limited to invalidity claims that rely on printed publications or patents but excludes other grounds for asserting validity.

On 7 May 2025, the Federal Circuit released its opinion in Ingenico Inc. v. IOENGINE (F.4th), 2025 U.S. App. LEXIS 10956. In Ingenico a Federal Circuit panel found that IPR estoppel did not prevent a defendant to assert during a district-court proceeding that a claimed patent was invalid due to the other prior art grounds, (i.e. if it had been known or used by others or was on sale or in public use), despite the fact that the defendant had previously litigated an IPR, and printed publications or Patents which made the same disclosures or were similar could have been reasonably raised during that IPR. The issue arose when Ingenico filed IPRs challenging IOENGINE’s patents, and the PTAB invalidated the majority of the challenged claims. In a subsequent district-court infringement trial, Ingenico successfully argued that patent invalidity was due to a prior art device that proved that the asserted claim were “on sale,” in “public use,” or “known” by others. IOENGINE appealed claiming IPR estoppel, because the device is substantially identical to printed publications Ingenico could have reasonably raised during the IPR. The Federal Circuit panel rejected IOENGINE’s arguments, reiterating the fact that IPR proceedings don’t allow a petitioner challenge a claimed innovation as being known or used previously by others, or on sale, or even in public use based on e.g. Estoppel did not apply because the device was not a patent.

Implications: Previously, IPR petitioners lacked certainty as to whether IPR estoppel applied to devices that are cumulative of prior art that were or could have been the basis for an IPR challenge. District courts were divided on this issue, with some holding that IPR Estoppel prevented the use these devices, while others held that IPR Estoppel did not apply. See, e.g. Prolitec Inc. v. Scentair Techs., LLC, 2023 U.S. Dist. LEXIS 223508, at *69 (D. Del. Dec. 13, 2023) (collecting cases).
The Ingenico ruling clarifies this issue and also narrows the scope of IPR Estoppel, as it is less likely that it will block the use of prior art other than literature even if it is nearly identical to what is described in printed publications or patents. We have heard of a possible request to reconsider or consider the case by the entire en banc court. This decision, without further judicial action, can be seen as a significant change in estoppel practice and strategic decisions. Discretionary Denials In 2020, the PTAB set forth a multifactor test for determining whether to deny an IPR petition when a parallel district court case was pending based. The test was laid out in Apple Inc. V. Fintiv, Inc., (IPR2020-00019) (Mar. 20, 2020), and has become known as the “Fintiv factors.” They are:

whether the district court has granted a stay or would grant a stay if an IPR proceeding is instituted;

the proximity of the district court’s trial date to the PTAB’s projected statutory deadline for a final IPR written decision;

the extent of investment in the parallel proceeding by the court and the parties;

how much overlap exists between issues raised in the IPR petition and in the parallel proceeding;

whether the petitioner and the defendant in the parallel proceeding are the same party; and
any other circumstances that impact the PTAB’s exercise of discretion, including the merits.

1. PTAB has been operating under the 2022 memo for the past few years. This memo instructed the PTAB to not follow these factors. On February 28, 2025 however, the Acting USPTO director revoked that memo. A March 24, 2020 guidance from the Chief Administrative Judge instructed the PTAB that it should again rely on the Fintiv factor when there is a parallel proceedings in district court or ITC. (The Acting director recently requested a briefing on Fintiv factors due to a concurrent ITC proceedings.) The PTAB then implemented a temporary process in which the decision to institute an IPR is divided between (1) discretionary factors and (2) merits, and other non-discretionary statutory factors.

2. Under the USPTO Director’s process (in consultation and with at least three PTAB Judges), the Director will decide first whether to deny a petition on discretionary grounds. If the petition passes this step, it is referred to a panel of three PTAB members who will review the merits of the case and any other non-discretionary statutory issues. Parties may also submit separate briefs requesting a denial of discretion that can address PTAB precedent, including Fintiv. Bloggers have reported that IPR Institutions have decreased from 69% down to 46% in the short time following this change.
3. On 16 May 2025, the acting USPTO director issued the first four decisions regarding requests for discretionary refusals. She denied two requests and ruled two others were not warranted. Each of the four decisions consists of a short (1-2 pages) substantive analysis on whether the IPR petitions are to be denied. Each decision focuses on when a district court infringement trial is likely to be held. However, the Acting Director made brief references to other factors.

4. Story originally seen here