Interim Director Discretionary Process

The Director has broad authority to determine whether to exercise discretion to institute a petition for IPR or PGR. When determining whether to exercise discretion to deny institution, the Director will consider existing precedent at the Patent Trial and Appeal Board (PTAB or Board), the Consolidated Trial Practice Guide, other considerations enumerated in the Process Memorandum, and any other fact or circumstance a party believes bears on the Director’s discretion. The Director’s decision will be based on a holistic review of the facts and circumstances. While the Director ordinarily will rely on facts and circumstances that the parties raise in their briefs, the Director will consider additional facts and circumstances where appropriate, for example:

• To maintain consistency with Discretionary Decisions that the Director has already issued
• Where there are facts and circumstances within the purview of the Office or Office operations that the parties are not in a position to raise
• Where there are facts and circumstances in the record or in the public domain that are relevant to the determination

The Process Memorandum includes a non-exhaustive list of considerations that may be raised in discretionary briefing, including Fintiv, General Plastic, Advanced Bionics, guidance from the Consolidated Trial Practice Guide (Nov. 2019), and the following exemplary circumstances:

• 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
• Any other considerations bearing on the Director's discretion

Parties are encouraged to address any fact or circumstance they believe bears on the Director’s discretion to institute, including reasons not discussed in current Board precedent or in the Process Memorandum.

The petitioner and the patent owner are permitted to file briefs addressing discretionary considerations. The patent owner may file a brief that explains the facts and circumstances that warrant discretionary denial of the petition. The petitioner may file a brief that opposes the patent owner’s request and explains why the Office should review the challenged patent in view of discretionary considerations. Each brief should provide a thorough explanation of the outcome that the party is advocating for, supported with facts and evidence. Additional details on party briefs are provided in Sections II–IV.

The petitioner and the patent owner should not present discretionary considerations in the petition or the Patent Owner Preliminary Response (POPR), respectively. Parties must make all their arguments (citing evidence, as needed) on the merits and other non-discretionary considerations in the petition, POPR, and any authorized reply or sur-reply. A Board panel will consider only arguments and evidence cited in those papers when determining whether to grant or deny institution.

If a petitioner chooses to file a stipulation, such as a Sotera stipulation, they should file it as soon as practicable, so that the patent owner may address the impact of the stipulation in its discretionary denial brief. The Director will take into account whether the stipulation materially reduces overlap between the proceedings. Where the petitioner is relying on corresponding system art in a co-pending proceeding and/or several other invalidity theories, a stipulation may not be particularly meaningful because the efficiency gained in an AIA proceeding will be limited.

The Director will issue a decision in every case where a patent owner has filed a brief requesting discretionary denial. The Director’s decision in each case will be based on a holistic review of the facts and circumstances and may highlight certain considerations. Each decision will either (1) deny the petition or (2) refer the petition to the Board to handle in case in normal course.

If the Director’s decision refers the Petition to the Board, a Board panel will issue a decision on institution addressing the merits and other non-discretionary considerations the parties have raised in the petition, a POPR, and any additional briefing that the Board panel has authorized.

The “merits” considerations refer to whether there is a reasonable likelihood that a petitioner would prevail with respect to at least one of the claims challenged in an IPR petition, whether a patent is eligible for PGR, or whether it is more likely than not that at least one of the claims challenged in a PGR petition is unpatentable or the PGR petition raises a novel or unsettled legal question that is important to other patents or patent applications.

In addition to the considerations involving whether a petition presents a sufficient number of grounds/challenges of claims that meet the reasonable likelihood standard, (see Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) (informative) and Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative)), non-discretionary considerations include those relevant to, for example, 35 U.S.C. §§ 311, 312, 315(a), (b), and (e), 322, and 325(a) and (e). Such considerations also may include, for example: (1) claim construction issues (see, e.g., Cambridge Mobile Telematics, Inc. v. Sfara, Inc., IPR2024-00952, Paper 12 (PTAB Dec. 13, 2024) (informative)); or (2) whether a petition meets the requirements of 37 C.F.R. § 42.104(b) (see, e.g., Adaptics Ltd. v. Perfect Co., IPR2018-01596, Paper 20 (PTAB Mar. 6, 2019) (informative)).

The Board will decide procedural motions that do not relate to discretionary considerations regardless of when those motions are filed.

After the PTAB issues a Notice of Filing Date Accorded (or a Notice of Defective Petition) and the PTAB accepts a patent owner’s Mandatory Notice, the new paper type “PO Discretionary Denial Brief” will be available. To select the new paper type, a patent owner should:

1. Log into P-TACTS.
2. Go to My Docket and select the AIA review case number to open Case Viewer.
3. Select the “+Add” button and File Other Document modal from the menu option.
4. Select “PO Discretionary Denial Brief” from the list of paper types.
5. Enter information into all required fields (marked by a red asterisk), beginning with paper type.
6. Select “PO Discretionary Denial Brief.”
7. Click on “Add to List” and then “Submit.”

After a patent owner files its discretionary denial brief, the new paper type “PET Opposition to Discretionary Denial Brief” will be available. To select the new paper type, a petitioner should: 

1. Log into P-TACTS.
2. Go to My Docket and select the AIA review case number to open Case Viewer.
3. Select the “+Add” button and File Other Document modal from the menu option.
4. Select “PET Opposition to Discretionary Denial Brief” from the list of paper types.
5. Enter information into all required fields (marked by a red asterisk), beginning with paper type.
6. Select “PET Opposition to Discretionary Denial Brief.”
7. Click on “Add to List” and then “Submit.”

A patent owner is not required to file a discretionary denial brief. However, if a patent owner wishes to raise any applicable bases for discretionary denial, it must do so in a discretionary denial brief. If a patent owner chooses not to file a discretionary denial brief, the Director typically will not issue a decision on discretionary considerations and responsibility will pass to a Board panel the day after the due date for such a brief. In that situation, the Office will enter a notice into the docket indicating the case is now referred to a Board panel to consider the merits and non-discretionary issues. 

After such a notice is entered, a Board panel will issue a decision on institution addressing the merits and other non-discretionary considerations that the parties have raised in the petition, a POPR, and any additional briefing that the Board panel has authorized.

The bifurcated process for decisions on institution is available in all IPR and PGR proceedings in which the deadline for a patent owner to file a POPR is after March 26, 2025. In these proceedings, the patent owner may file a brief requesting discretionary denial of the petition.

A patent owner must file a discretionary denial brief within two months of the date on which a Notice of Filing Date Accorded (NFDA) is entered into the record of the proceeding. To ensure statutory deadlines are met, the parties may not stipulate to a later due date for a patent owner discretionary denial brief.

In its brief, the patent owner should argue with particularity the circumstances that warrant discretionary denial. The patent owner may argue circumstances that warrant denial based on existing PTAB precedent, the Consolidated Trial Practice Guide, relevant considerations enumerated in the Process Memorandum, and any other consideration or circumstance that the patent owner believes bears on the Director’s discretion.

A petitioner should raise any discretionary issues in its opposition to a patent owner’s discretionary denial brief, including issues relating to 35 U.S.C. § 325(d), parallel proceedings, parallel petitions, serial petitions, and any other matter bearing on the Director’s discretion to institute. The petition should not address discretionary issues.

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A brief opposing a patent owner’s discretionary denial request must be filed within three months of the date on which a Notice of Filing Date Accorded (NFDA) is entered into the record of the proceeding. To ensure statutory deadlines are met, the parties may not stipulate to a later due date for a petitioner's opposition brief.

A petitioner's brief should be responsive to the arguments raised in patent owner’s discretionary denial brief and should raise any discretionary issues, including issues relating to 35 U.S.C. § 325(d), parallel proceedings, parallel petitions, serial petitions, and any other matter bearing on the Director’s discretion to institute. A petitioner's brief should also explain why, notwithstanding discretionary considerations, the Office should institute review of the challenged patent, including all facts or circumstances, such as those set forth in current Board precedent or the Process Memorandum.

A reply and a sur-reply to discretionary briefs are not authorized by default. A patent owner must demonstrate good cause for authorization to file a reply. Similarly, a petitioner must demonstrate good cause for authorization to file a sur-reply.

Parties should request authorization to file a reply or sur-reply as soon as practicable due to the time constraints on the discretionary considerations process. A party requesting briefing should send an email request, with a copy to counsel for all parties, to Director_Discretionary_Decision@USPTO.gov.

The Director will receive each petition, discretionary denial brief, opposition brief, and POPR, as well as any evidence the parties have made of record in support of their papers. The Director retains responsibility for resolving whether the proceeding should be denied on discretionary grounds, unless the Director otherwise states. Similar to the Director Review process, once received, the Director will determine, in consultation with at least three senior PTAB judges who will be separate from judges addressing the merits, whether discretionary denial is appropriate, as set forth in the Process Memorandum. In deciding whether to exercise discretion to institute an IPR or a PGR, the Director may consult with other USPTO employees as needed, as long as those individuals do not have a conflict of interest.

Absent good cause, the Director will issue a decision on discretionary considerations within one month of the due date of the last relevant paper filed. The Director’s decision will explain why the Director has decided to exercise discretion to deny institution or why discretionary denial is not appropriate.

When parties present arguments regarding the strength of the merits, the Director will consult with USPTO personnel with relevant technical expertise. A Board panel is not bound by the Director’s assessment of the merits in a discretionary consideration decision but must explain in the decision on institution why the panel’s findings and/or determination are different (citing the parties’ evidence of record as relevant), if that occurs.

If the Director exercises discretion to deny institution, then a party may file a request for rehearing or Director Review within 30 days of the Director’s decision. If the party is requesting Director review, the party shall file its request under the procedures set forth in 37 C.F.R. § 42.75(c) and submit the fee as set forth in 37 C.F.R. § 42.15(f).

If the Director issues a decision determining that discretionary denial is not appropriate, a party should file a single request for rehearing or Director Review after the Board panel issues its decision.

A party may raise changed circumstances, for example, a change in trial date, in a request for rehearing or a request for Director Review filed within the applicable time period.

A Director Discretionary Decision will be entered into the record of a proceeding. To find Director Discretionary Decisions on the PTAB webpage: 

1. Select “All PTAB decision data”.
2. Select the “Documents” tab on the “PTAB Decisions” page.
3. Search for “Director Discretionary Decision” under “Document type.”
4. Select both “Director Discretionary Decision: Refer” and “Director Discretionary Decision: Deny”.
5. Choose “Apply.”