Discussions on PTAB Discretionary Denial: Insights and Patterns from the Initial Two Months of the Director's Interim Briefing Procedure
A recent webinar, titled "Discretionary Denial at the PTAB: Evolving Insights From the Director's Interim Briefing Process," delves into the latest developments in the process and its implications for discretionary denial practice at the Patent Trial and Appeal Board (PTAB). The discussion, led by WilmerHale Partners Dave Cavanaugh, Alexis Cohen, Greg Lantier, and Josh Stern, covers various aspects of the new process.
The United States Patent and Trademark Office (USPTO) has implemented an interim process for managing PTAB workload. Central to this process is the Director's interim process and PTAB's implementation of it. The new process, announced on March 26, 2025, introduces a bifurcated approach for handling discretionary denials of institution decisions for Inter Partes Review (IPR) and Post-Grant Review (PGR) petitions.
Bifurcated Decision Process
The Director and a minimum of three PTAB judges first decide whether to deny institution based on discretionary factors such as workload management, prior adjudication, changes in law, strength of the challenge, reliance on expert testimony, settled expectations, and public interest considerations. Only if the Director finds no basis for discretionary denial does the petition proceed to a three-member panel for a merits review.
Briefing Schedule and Limits
Patent owners may submit a discretionary denial brief within two months after the Notice of Filing Date is given, specifically addressing why the petition should be denied discretionary institution. Petitioners may then file an opposition brief no later than one month following the patent owner’s briefing. Word limits are set to 14,000 words for opening and opposition briefs, and 5,600 words for any replies, aligning with existing limits on petitions and responses.
Workload Management as a Prominent Discretionary Factor
Workload management is now a strongly emphasized basis for discretionary denial aimed at managing PTAB’s limited resources. This especially affects cases with multiple petitions, large records, complex technical subject matter, or risks of duplicative litigation. Petitioners are advised to consolidate petitions, avoid duplication, provide clear justifications for their challenges, and present fact-based arguments supporting institution.
Impact on Litigation Strategy
Petitioners must anticipate possible discretionary denials and may need to proactively address workload concerns and other discretionary factors in their filings or responses. Joinder requests are scrutinized to ensure added efficiency and avoid unnecessary resource drain if original petitioners settle or withdraw.
In summary, the USPTO’s March 2025 interim process for PTAB workload management introduces a procedural change that gives the Director greater initial control over discretionary denials in an effort to reduce PTAB’s workload and focus resources on more meritorious challenges. This bifurcated approach prioritizes early discretionary screening to improve PTAB efficiency, significantly influencing petition filing and response strategies for post-grant proceedings.
Attendees of the webinar may be able to claim England & Wales CPD, with CLE credit for live attendance offered. New Jersey grants reciprocal credit for programs approved in New York, and the program is planned to offer CLE credit for experienced New York attorneys only. The Colorado Supreme Court will determine the type and amount of credit awarded, and WilmerHale can issue Connecticut credit. However, CLE credit is not available for on-demand webinar recordings. The program is planned to offer CLE credit in California and non-transitional credit in New York.
WilmerHale has been accredited by the New York State Continuing Legal Education Board and has been approved as a Colorado Certified Provider. The discussion will cover trends in arguments for and against discretionary denial, as well as considerations for Patent Owners and Petitioners in seeking or arguing against discretionary denial.
Technology is leveraged in the bifurcated decision process as patent owners and petitioners adhere to word limits set for briefs, aligning with existing limits on petitions and responses, demonstrating the importance of clear and concise legal arguments in the digital era. The implementation of this interim process by the USPTO showcases the integration of technology in accelerating workload management and improving efficiency at the Patent Trial and Appeal Board (PTAB).
