The U.S. gave crypto one of its biggest regulatory jolts in years. With the signing of the Guiding and Establishing National Innovation for U.S. Stablecoins (“GENIUS”) Act stablecoins now have a legal framework. The GENIUS Act is part of a broader push to accelerate the development of emerging technologies in the U.S., from artificial intelligence to quantum computing. That same push is showing up in the patent world, where the U.S. Patent and Trademark Office (“USPTO”) and Patent Trial and Appeal Board (“PTAB”) are beginning to clarify how blockchain-related inventions can clear long-standing Section 101 hurdles.
PTO Defends its Recent Policy Changes Regarding Discretionary Denials
In the past few months, the U.S. Patent and Trademark Office (“PTO”) Acting Director has made substantial changes to the process for, and factors considered in, exercising discretion to deny institution of an inter partes review (“IPR”) petition. We have discussed these changes and recent decisions in prior blogs. Now, the PTO is facing legal challenges stemming from these policy changes. In one pertinent example, SAP America, Inc. filed a Petition for Writ of Mandamus to the Federal Circuit resulting from the PTO’s discretionary denial of its IPR petition, challenging the PTO Acting Director’s authority to enforce these new policies.
Discretionary Denials in Action: iRhythm Technologies Inc. v. Welch Allyn Inc.
The U.S. Patent and Trademark Office (“USPTO”) Acting Director’s recent decision to deny institution of inter partes review (“IPR”) in iRhythm Technologies Inc. v. Welch Allyn Inc. offers valuable lessons for both patent owners and patent challengers navigating the PTAB’s approach to discretionary denials.
Further Shifts in Patent Office Guidance for Discretionary Denials Signal Uphill Battles for Patent Challengers
On the heels of the rescission of the Fintiv guidance memorandum, the U.S. Patent and Trademark Office has again reshaped the PTAB’s approach to discretionary denials. On March 26, 2025, the Acting Director issued a new memorandum that fundamentally changes how the PTAB will handle inter partes review and post grant review petitions
Focus on Fintiv: Shift in Patent Office Guidance for Discretionary Denials of Patent Challenges
On February 28, 2025, the U.S. Patent and Trademark Office announced that it was rescinding a 2022 memorandum that provided guidance regarding the application of the Apple v. Fintiv decision to the Patent Trial and Appeal Board’s discretion to deny patent challenges with pending parallel district court litigation. The PTO has referred parties back to precedent for guidance including Apple Inc. v. Fintiv, Inc. Rescinding the 2022 memorandum also has the effect of effectively removing the proposed rules related to discretionary denial that were under consideration as recently as last year.