On April 25, 2025, the USPTO issued additional information in response to frequently asked questions (FAQs) about the “Interim Processes for PTAB Workload Management” memorandum issued on March 26, 2025. As discussed in our previous alert, the memo significantly altered pre-institution briefing procedures for IPRs and PGRs. Under the Interim Process, decisions on whether to institute trial are bifurcated, with the Director first determining whether discretionary denial is appropriate based on discretionary considerations. If the Director determines discretionary denial is not appropriate, the case will proceed to a Board panel to determine whether to institute trial based on the merits.
The FAQs provide further important details and clarification about the Interim Process. Some highlights include:
Timing
- The timing for the discretionary denial briefing will not change even if patent owner files its discretionary brief early. Petitioner’s opposition will still be due within 1 month of the due date for a patent owner discretionary denial brief (i.e., on the Patent Owner Preliminary Response (POPR) due date).
- Absent good cause, the Director will issue a decision on discretionary considerations within 1 month of the due date of the last relevant paper filed.
Bi-furcated decision-making
- The Board panel will not consider arguments made in discretionary denial briefing when evaluating the merits to determine whether to grant or deny institution.
- The Director will consider relevant arguments made in the merits briefing (e.g., petition, POPR), if requested by the parties. The FAQs expressly allow for this, notwithstanding the general prohibition on incorporation by reference in 37 C.F.R. § 42.6(a)(3).
- If a patent owner does not to file a discretionary denial brief, the Board panel will not address discretionary considerations (unless otherwise authorized by the Director), except where the petition presents an insufficient number of challenges that meet the reasonable likelihood standard.
Stipulations
- A petitioner should file any Sotera or Sand stipulation “as soon as practicable,” so that a 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 proceedings—where the petitioner relies on corresponding system art and/or several other invalidity theories in a co-pending proceeding, a stipulation “may not be particularly meaningful” because of limited efficiency gained by any AIA proceeding.
Expert testimony
- Extensive reliance on expert testimony or reasonable disputes between experts on dispositive issues may suggest the questions “are better resolved in an Article III court.” The failure to provide focused expert testimony may weigh against institution.
Requesting rehearing of discretionary determination
- If the Director exercises discretion to deny institution, a party may file a request for rehearing or Director Review within 30 days of the Director’s decision.
- 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.
- If a party would like to request rehearing of discretionary considerations, alone or in combination with merits or other non-discretionary considerations, that party must file a request for Director Review.
Concurrent with the issuance of the FAQs, the USPTO de-designated as precedential the decision in NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13 (September 7, 2022). This decision was issued as a sua sponte Director Review decision by former Director Vidal and held that any stipulation offered by a petitioner must be entered prior to the Board’s decision on institution. It appears the decision was de-designated to avoid confusion or inconsistency with the FAQs, which state that a petitioner should submit a stipulation as soon as practicable.
