By Matt Johnson –
On October 17th, the PTAB issued a Notice of Proposed Rulemaking regarding criteria for the Office to apply when making discretionary denial determinations.
The proposed rule would:
- Require an IPR petitioner to file a stipulation not to pursue any invalidity challenges under 35 U.S.C. §§ 102 or 103 (including product-prior-art-based grounds) in other forums (a Sotera+ stipulation);
- Provide that the USPTO will not institute an IPR when the USPTO (e.g., IPR, reexamination) or another forum (e.g., district court, ITC) already has adjudicated patentability or validity of the claims (regardless of whether the prior challenge was brought by another party); and
- Provide that the USPTO will not institute an IPR when another proceeding is likely to determine patentability or validity of the claims under §§ 102 or 103 first (e.g., the typical Fintiv scenario).
The provisions note that inter partes review shall not be “instituted or maintained” in certain circumstances. The PTAB’s view on the meaning of “maintained” is not elaborated on, nor is retroactivity. So the applicability to already-instituted IPR matters remains unclear.
Specifically, the rulemaking would amend 37 C.F.R. § 42.108 by adding paragraphs (d) through (g) to read as follows:
(d) Required stipulation for efficiency.
Inter partes review shall not be instituted or maintained unless each petitioner files a stipulation with the Board and any other tribunal where it is litigating or later litigates regarding the challenged patent, stating that if a trial is instituted, the petitioner and any real party in interest or privy of the petitioner will not raise grounds of invalidity or unpatentability with respect to the challenged patent under 35 U.S.C. 102 or 103 in any other proceeding.
(e) Claims found valid in prior proceedings.
Inter partes review shall not be instituted or maintained if a challenged claim or an independent claim from which a challenged claim depends:
(1) U.S. District Court Trial – Was found not invalid under 35 U.S.C. 102 or 103 by a district court or jury following a bench trial or jury trial in a decision or verdict that has not been vacated or reversed in relevant part;
(2) U.S. District Court Summary Judgment – Was found not invalid by a district court in a summary judgement decision finding no dispute of material fact under 35 U.S.C. 102 or 103 that has not been vacated or reversed in relevant part;
(3) U.S. International Trade Commission – Was found not invalid under 35 U.S.C. 102 or 103 in initial or final determination of the U.S. International Trade Commission that has not been vacated or reversed in relevant part;
(4) PTAB Final Written Decision – Was found not unpatentable in a final written decision of the Board under 35 U.S.C. 318(a) or 328(a) that has not been vacated or reversed;
(5) Ex Parte Reexamination – Was found patentable in an office action or decision by the Board following a reexamination request filed under Chapter 30 of Title 35 United States Code by someone other than the patent owner, the patent owner’s real party in interest or privy; or
(6) Federal Circuit – Was found unpatentable or invalid under 35 U.S.C. 102 or 103 in a decision, but that decision was reversed in relevant part by the U.S. Court of Appeals for the Federal Circuit.
(f) Parallel Litigation – Inter partes review shall not be instituted or maintained if, more likely than not, any of the following will occur, with respect to a challenged claim or an independent claim from which a challenged claim depends, before the due date for the final written decision pursuant to 35 U.S.C. 316(a)(11):
(1) U.S. District Court – A district court trial in which a party challenges the patent under 35 U.S.C. 102 or 103;
(2) U.S. International Trade Commission – an initial or final determination of the U.S. International Trade Commission with respect to 35 U.S.C. 102 or 103; or
(3) PTAB Final Written Decision – issuance of a final written decision by the Board under 35 U.S.C. 318(a) or 328(a).
(g) Institution in extraordinary circumstances. If a panel of the Board determines that extraordinary circumstances warrant institution notwithstanding paragraphs (d), (e), or (f) the Panel shall refer to matter to the Director who may personally institute inter partes review. Extraordinary circumstances may include a determination by the Director that the prior challenge barring institution was initiated in bad faith, e.g., for the purpose of preventing future challenges, or that the prior challenge is rendered irrelevant in view of a substantial change in a statute or precedent of the Supreme Court of the United States. Unusual and extraordinary circumstances shall not include new or additional prior art, new expert testimony, new caselaw (except as provided above) or new legal argument, or a prior challenger’s failure to appeal. Neither the Director nor the Board shall waive the requirements of paragraphs (d), (e), or (f) of this section except as provided in this paragraph. Frivolous or abusive petitions under this paragraph may be appropriately sanctioned, including with an award of attorneys’ fees.
Matthew Johnson
Latest posts by Matthew Johnson (see all)
- Director Takes On All Institution Duties - October 17, 2025
- PTAB Issues Notice of Discretionary Denial Rulemaking - October 17, 2025
- Discretionary Denial Statistics - October 15, 2025