PTAB Discretionary Denials: Preparing and Responding to Petitions, Application of the Fintiv Factors

Recording of a 90-minute premium CLE video webinar with Q&A

Conducted on Tuesday, September 21, 2021

Recorded event now available

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Course Materials

This CLE course will guide patent counsel on recent discretionary denial trends. The panel will discuss Patent Trial and Appeal Board (PTAB) precedential decisions on discretionary denials and their application in subsequent cases. The panel will offer suggestions for petitioners and patent owners in light of the PTAB's increased use of discretionary denials.


By statute, the PTAB has discretion in deciding which petitions to institute (35 U.S.C. Section 314(a)/ Section 324(a)). Such a determination is, for the most part, non-appealable (35 U.S.C. Section 314(d)/ Section 324(e)). Recently, there has been an uptick in PTAB institution denials, and many observers comment that it is based in the PTAB exercising its discretion more frequently.

Discretionary denials can be categorized under three broad labels: denying institution under 35 U.S.C. Section 314(a) based on a parallel proceeding; denying institution under 35 U.S.C. Section 325(d) if the petition relies on the same or similar prior art/arguments presented during examination; and denying institution under 35 U.S.C. Section 314(a) based on serial petitions. Each category has PTAB related precedential opinions to help guide practitioners: Apple Inc. v. Fintiv Inc. for parallel proceedings; Advanced Bionics L.L.C. v. Med-EL Elektromedizinische Geräte GMBH for Section 325(d); and General Plastic Industries Co. v. Canon Kabushiki Kaisha for serial petitions.

In addition, the creation of the Precedential Opinion Panel (POP) at the PTAB, the USPTO request for comments on whether it should promulgate rules regarding its institution frameworks, and the uncertainty of when the USPTO will have a new director, are all factors at play in this evolving area of PTAB practice.

Listen as our authoritative panel of IP attorneys examines the precedential decisions on discretionary denials and the recent application of these decisions. The panel will offer guidance for preparing and responding to petitions and strategies for avoiding such denials.



  1. Discretionary denials
    1. Statistics
    2. 35 U.S.C. Section 314(a)
  2. 35 U.S.C. Section 325(d) discretionary denial precedential decisions and recent application
  3. Best practices
    1. Preparing and responding to petitions
    2. Avoiding discretionary denials


The panel will review these and other crucial issues:

  • How can practitioners use the lessons of the PTAB denials to learn what patent owners are doing to achieve their ultimate success?
  • What best practices should practitioners apply when preparing and prosecuting applications to avoid denials?


Goldberg, Joshua
Joshua L. Goldberg

Finnegan Henderson Farabow Garrett & Dunner

Mr. Goldberg focuses on patent office proceedings, client counseling, and litigation. Devoting the majority of his time...  |  Read More

Irving, Thomas
Thomas L. Irving

Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Dowty, Lauren
Lauren J. Dowty

Finnegan Henderson Farabow Garrett & Dunner

Ms. Dowty is experienced in intellectual property litigation and transactional matters. She focuses on complex patent...  |  Read More

Wang, Oulu
Oulu (Lulu) Wang, Ph.D.

Finnegan Henderson Farabow Garrett & Dunner

Dr. Wang represents life sciences clients in patent litigation, contentious proceedings before the USPTO, patent...  |  Read More

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