Stewart Issues First Decisions Regarding Discretionary Deny Under Interim Workload Process
The Office announced late March that Coke Morgan Stewart, Acting USPTO director, would be taking on requests for discretionary denies of inter partes reviews (IPRs) or post grant reviews (PGRs) under a bifurcated new process. That announcement came one month after Stewart rescinded former USPTO Director Kathi Vidal’s “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.” The Vidal memo downplayed broad application of Apple Inc. v. Fintiv, Inc. and the six factors outlined in that precedential decision, which the PTAB considers in determining whether to institute a post-grant proceeding where there is parallel district court litigation.
But Stewart’s February announcement rescinding that memo said that parties to post-grant proceedings “should refer to
precedent for guidance, including Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. The February announcement rescinding that memo said that parties to post-grant proceedings “should refer to
precedent for guidance, including Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. The Director will issue a denial of institution if discretionary denial is appropriate. If discretionary refusal is inappropriate, the director will issue a ruling on the issue of discretionary refusal and refer the petition according to Standard Operating Procedure 1 (Rev.). 16). From that point forward the assigned three-member panel will handle the case in the normal course, starting with a decision on institution based on the merits and other non-discretionary statutory considerations.
In the first four decisions, the Director ruled that two of the requests for discretionary denial were warranted and two were not.[PTAB]In Twitch Interactive, Inc. v. Razdog Holdings LLC, Stewart explained that the request was based primarily on a parallel district court proceeding in the Northern District of California that did not have a scheduled trial date. The Petitioner cited statistical data that showed the earliest possible trial date would be February 2027. This was “significantly after the projected final decision date” of 30 July 2026. Petitioner presented convincing evidence that a stay would be granted. Stewart found that denial of the request was also inappropriate in Amazon.com v. NLGiken, Inc., based on timing concerns. In contrast, in Arm Ltd. and Mediattek, Inc. V. Daedalus Prime LLC, the Director determined that the time to trial was between March and May of 2026, and the FWD for the IPR was projected at June 2026. “As such, it is unlikely that a final written decision in this proceeding will issue before district court trial occurs,” said the decision.
Finally, in Ericsson and Verizon Wireless v. Procom International, the request to discretionarily deny a petition for IPR was granted because “a trial date in the related district court litigation will precede the projected final written decision issuance date in this proceeding by nine months.” While the petitioner said it waited nearly a year to file the petition for IPR due to the patent owner’s proposed amended infringement contentions, Stewart said the petitioner did “not explain sufficiently the nature of those proposed amendments and how they impacted the timing of the Petition.”
Additional decisions under the interim process are likely to be issued in the coming weeks.
Eileen McDermott
Eileen McDermott, Editor-in Chief of IPWatchdog.com is a veteran IP and legal journalist. Eileen McDermott is a veteran IP journalist and has held editorial and management positions at
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