USPTO Rescinds Vidal Memo on PTAB Discretionary Denials

In late February 2025, the U.S. Patent and Trademark Office (USPTO) quietly dropped a small bomb on the
patent bar: it rescinded then–Director Kathi Vidal’s 2022 memorandum on Patent Trial and Appeal Board
(PTAB) discretionary denials. For petitioners who had grown comfortable with the “safe harbors” under the
memo, this felt a bit like showing up to the airport and discovering the airline no longer recognizes your
frequent-flyer status. Same flight, very different experience.

The change doesn’t rewrite the America Invents Act (AIA), but it does reset the ground rules for how the
PTAB decides whether to institute inter partes review (IPR) and post-grant review (PGR) when there is
parallel district court or International Trade Commission (ITC) litigation. If you litigate patents, file IPRs,
or own patents that often wind up at the PTAB, the rescission of the Vidal memo on PTAB discretionary
denials is not background noise. It’s a new operating system.

Quick Refresher: PTAB, Fintiv, and Why Discretionary Denial Matters

Under 35 U.S.C. § 314(a), the USPTO “may” institute an IPR if the petition shows a reasonable likelihood
that the petitioner would prevail on at least one challenged claim. That “may” is doing a lot of work. It
gives the PTAB discretion to deny institution even when the merits threshold is met – most famously under
the framework established in Apple Inc. v. Fintiv, Inc.

The Fintiv factors provide a nonexclusive list of considerations for whether to deny institution in
light of parallel litigation, usually a district court case involving the same patent and parties. These factors
include, among others:

• Whether the district court trial is scheduled to occur before the PTAB’s final written decision deadline.
• The amount and stage of work already completed in the district court.
• Overlapping issues and parties between the PTAB and the court.
• Other circumstances impacting efficiency, fairness, and patent quality.

After Fintiv, discretionary denials surged, especially where district court trials were set to occur before the
PTAB’s statutory deadline. Petitioners complained about unpredictability and “gamesmanship” over trial
dates. Patent owners, on the other hand, viewed discretionary denial as one of the few levers counterbalancing
the PTAB’s reputation as a patent “death squad.”

What the 2022 Vidal Memo Actually Did

In June 2022, Director Kathi Vidal issued the memorandum titled
“Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court
Litigation.” The goal was to bring more clarity, consistency, and perceived fairness to Fintiv-based
discretionary denials.

In broad strokes, the Vidal memo did three big things that became very important to PTAB practice:

1. Created safe harbors from Fintiv-based denials.
   The PTAB would not discretionarily deny based on Fintiv where the petition presented
   “compelling evidence of unpatentability.” In practice, strong prior art and well-drafted expert
   declarations could insulate petitioners from Fintiv denials in many cases.
2. Excluded ITC investigations from Fintiv analysis.
   The memo clarified that Fintiv did not apply to parallel ITC proceedings, reasoning that ITC determinations
   do not decide patent validity and therefore don’t justify denying an IPR on efficiency grounds.
3. Narrowed how district court schedules were used.
   Panels were instructed to consider realistic time-to-trial and rely on empirical median time-to-trial data,
   not just optimistic trial dates. This significantly reduced the weight of aggressive scheduling orders that
   could slip in practice.

The result? After the Vidal memo, Fintiv-based discretionary denials declined sharply, and petitioners had
more predictability. If they filed early and assembled a strong record, they could feel reasonably confident
that the PTAB wouldn’t decline institution just because a district court case was humming along.

The February 2025 Pivot: USPTO Rescinds the Vidal Memo

On February 28, 2025, the USPTO announced that it was rescinding the June 21, 2022 Vidal memo on
discretionary denials in AIA post-grant proceedings with parallel district court litigation. The notice made
several important points:

• The 2022 interim guidance is no longer in effect. Panels are no longer required to follow the Vidal memo’s
  safe harbors or exclusions.
• PTAB and Director Review decisions that relied on the Vidal memo are no longer binding or persuasive
  authority to the extent they rested on that memo’s reasoning.
• The Office signaled that new guidance and processes would govern discretionary denial going forward,
  including updated procedures for when and how “discretionary considerations” are addressed.

Importantly, the rescission does not overrule Fintiv itself. The statutory framework and the PTAB’s
precedential Fintiv decision remain. What changed is the layer of policy guidance that had previously
constrained how Fintiv could be used.

The New Discretionary Denial Landscape After the Rescission

The rescission didn’t occur in a vacuum. It arrived alongside new USPTO processes and guidance that
restructured how discretionary issues are handled.

The March 26, 2025 Interim Process

On March 26, 2025, the USPTO released a new interim process that effectively bifurcates PTAB decision-making
on institution:

• A first stage focused on discretionary considerations – including parallel litigation, workload
  management, policy concerns, and fairness.
• A second stage that reaches the merits (whether the petition meets the statutory threshold) if, and
  only if, the petition clears the discretionary hurdle.

In many cases, a dedicated panel (and ultimately the Director) now evaluates discretionary denial separately
from the technical merits. This process can result in discretionary denials even where the prior art is strong
– reinforcing that “good art” is necessary but no longer sufficient to guarantee a shot at PTAB review.

New Guidance on Fintiv and Parallel Litigation

Additional memoranda and law firm analyses highlight that, post-rescission:

• Panels have regained broader flexibility in how they weigh the Fintiv factors. The prior safe harbor
  for “compelling merits” is gone as a formal constraint, even if strong merits still matter.
• ITC proceedings are once again a relevant factor in discretionary denial. While ITC does not decide
  validity, the PTAB may consider parallel ITC litigation as part of the overall efficiency and resource
  allocation analysis.
• The Office continues to emphasize efficiency, fairness, and patent quality, but without the rigid
  limits imposed by the Vidal memo. Panels can more freely consider fast-moving district court dockets and
  overlapping issues.

Put differently, the PTAB’s discretionary “toolkit” just got bigger again – and petitioners can’t rely on the
2022-era comfort blanket.

What the Rescission Means for Petitioners

If you file IPRs or PGRs, the rescission of the Vidal memo on PTAB discretionary denials raises the bar in
several practical ways:

1. Expect More – and Less Predictable – Discretionary Denials

Observers are already predicting an uptick in discretionary denials. Without a formal safe harbor for
compelling merits, panels can deny institution even where the prior art looks strong on paper. The calculus
will be highly fact-dependent, with more weight on:

• How far the district court case has advanced (Markman, summary judgment, trial date stability).
• The relative timing of the PTAB schedule and court proceedings.
• Duplicative effort, witness overlap, and potential for inconsistent outcomes.

Translation: two petitions with similar art may now have different fates depending on how the litigation
chessboard is set up.

2. Filing Early Just Got Even More Important

The longer you wait to file an IPR after being sued, the more ammunition you hand to the patent owner on
discretionary denial. Under the new regime, petitioners should:

• Front-load prior art searching and petition drafting shortly after service of the complaint.
• Coordinate PTAB strategy with early case scheduling conferences and Rule 16 orders.
• Be prepared to explain why the PTAB is still the more efficient forum for validity even if the court has
  already invested significant effort.

Think of it as a race you did not choose to run but are now definitely participating in.

3. Discretionary Briefing Is Now a Core Advocacy Skill

The USPTO’s updated processes invite more structured briefing on discretion separate from the merits. That
gives both sides an opportunity – and a challenge. Petitioners will need to:

• Develop a clean, data-backed story about efficiency and fairness (including realistic timelines).
• Address Fintiv factors head-on instead of trying to ignore them.
• Anticipate and rebut patent owner arguments about duplicative effort and harassment.

In other words, winning the “should we have this trial at all?” debate is now just as important as winning
the “is this patent invalid?” debate.

What the Rescission Means for Patent Owners

If you’re on the patent owner side, the rescission is closer to a cause for cautious celebration.

1. Renewed Leverage to Seek Discretionary Denials

Patent owners can once again lean harder on parallel litigation posture to argue for denial, without
confronting the Vidal memo’s safe harbors. Strategic moves include:

• Pursuing realistic but firm trial schedules and pushing early claim construction.
• Highlighting overlapping invalidity arguments in court and at the PTAB.
• Framing the PTAB petition as wasteful duplication or a “second bite at the apple.”

For certain patents – especially those in high-stakes pharmaceutical, telecom, or semiconductor disputes –
a discretionary denial can be as valuable as a merits victory.

2. ITC and Multi-Forum Strategy Are Back in the Spotlight

With the ITC once again explicitly on the table for discretionary denial analysis, patent owners may find
ITC complaints even more attractive as part of a multi-forum strategy. The combination of:

• A fast-moving ITC schedule,
• Parallel district court litigation, and
• A PTAB petition filed only after those cases are well underway

can be used to craft a compelling “enough is enough” narrative against institution.

Practice Tips and Scenario Planning

For Petitioners

• Model the Fintiv factors before you file. Treat Fintiv like a pre-filing checklist, not an
  afterthought. If more than half of the factors lean heavily against you, consider earlier filing, different
  art, or a different overall strategy.
• Use the district court record strategically. Court scheduling orders, discovery status, and Markman
  timelines can all be deployed to show that PTAB review still promotes efficiency and patent quality.
• Address ITC head-on. If there is a parallel ITC case, explain why PTAB review still makes sense
  despite the ITC’s limited jurisdiction over validity.
• Invest in a dedicated discretionary denial section. Treat it like appellate-level advocacy,
  not a few boilerplate paragraphs at the end of the petition.

For Patent Owners

• Develop a “PTAB avoidance” playbook. For core assets, plan district court and ITC strategy with an
  eye toward maximizing arguments for discretionary denial if and when a petition appears.
• Build a record of investment and progress. Emphasize completed claim construction, expert discovery,
  and upcoming trial milestones.
• Coordinate across forums. Align positions in district court and at the PTAB so you can credibly
  argue that the PTAB petition is duplicative, disruptive, or both.

Experiences and Lessons from the Field

While the rescission of the Vidal memo is relatively recent, early experiences from practitioners (and a few
candid hallway conversations at conferences) are already shaping a new set of “unwritten rules.”

Consider a hypothetical but very realistic scenario. A technology company is sued in a fast-moving district
court favored by patent owners. Under the Vidal memo regime, defense counsel’s playbook was fairly
predictable: move quickly, file an IPR within a few months, assemble strong prior art, and lean on the
“compelling merits” pathway to dodge Fintiv-based denial. Even if the district court set an ambitious trial
date, petitioners could argue that strong merits should carry the day.

Post-rescission, the same company is far less confident. Counsel now conducts a pre-filing “discretion
audit” alongside the prior-art search:

• How credible is the trial date, based on this judge’s history?
• Has the court already invested significant time in claim construction or summary judgment?
• Is there an ITC case that will soak up even more judicial and party resources?

In one composite example, a petitioner filed an IPR only after the Markman hearing, assuming the strength
of the prior art would offset timing concerns. Under the Vidal memo, that strategy might have been
salvageable. Under the new framework, the panel treated the late filing, advanced district court posture, and
overlapping issues as decisive, denying institution on discretionary grounds even while acknowledging that
the prior art was “not insubstantial.” The message was clear: timing is no longer a soft factor – it is a
gating factor.

Patent owners, for their part, are recalibrating too. Some are experimenting with more aggressive early
motion practice and targeted discovery to make the district court case look “mature” as quickly as
possible. Others are coordinating litigation teams and PTAB counsel more tightly, crafting unified stories
about burden, duplication, and fairness. The most successful responses so far tend to come from teams that
map out a 12–18 month, multi-forum strategy rather than reacting piecemeal to each new filing.

There is also a cultural shift underway at the PTAB. Practitioners report more detailed orders requesting
briefing specifically on discretionary issues, and more explicit engagement with policy themes such as
workload management and the public interest. Panels are asking not only “Is this patent likely invalid?”
but also “Is this the best use of the PTAB’s limited resources?” That question can cut either way, and
advocates who can tell a persuasive, data-backed story on efficiency and fairness are gaining an edge.

Finally, everyone is watching how Director-level review and new internal processes play out. With more
centralized oversight of discretionary denials, there is potential for greater consistency – but also for more
top-down policy experimentation. For now, the safest assumption is that the Board’s discretion is alive and
well, and that practitioners on both sides need to treat discretionary denial as a primary battleground, not a
side skirmish.

None of this means the PTAB has become inhospitable to petitioners or magically pro-patent-owner. It
does mean that the era of relatively predictable safe harbors under the Vidal memo is over. In its place is a
more nuanced, more strategic, and, yes, more uncertain environment – one in which timing, forum selection,
and story-telling matter just as much as the prior art itself.

Bottom Line

The USPTO’s decision to rescind the Vidal memo on PTAB discretionary denials marks a significant shift in
AIA post-grant practice. Fintiv is still here, but the rails that constrained how it could be used are not. For
petitioners, that means earlier filing, deeper strategic planning, and more sophisticated briefing on
discretion. For patent owners, it means renewed opportunities to keep key assets out of PTAB trials by
leveraging parallel litigation postures.

The common thread is simple: discretionary denial is no longer a background doctrine you mention in a few
paragraphs at the end of a brief. It is now a central, outcome-determinative feature of PTAB practice. Treat
it accordingly – and maybe keep an extra pot of coffee handy when planning your next IPR.

This article provides general information and analysis for educational purposes only and does not constitute legal advice. Parties facing PTAB or district court proceedings should consult qualified counsel regarding their specific circumstances.