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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

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Conducted on Tuesday, April 25, 2023

Recorded event now available

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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 practice suggestions for petitioners and patent owners.


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)). The uptick in PTAB institution denials after Fintiv reversed in 2022 as petitioners gave up grounds in related litigations and the USPTO Director issued new, binding interim guidance addressing the PTAB's approach to discretionary denials of PTAB petitions in cases with related litigation. Director Vidal issued a precedential decision on February 27, 2023, CommScope v. Dali Wireless, IPR2022-01242, Paper No. 23 (PTAB Feb. 27, 2023), outlining the limited circumstances in which a PTAB panel is to engage in the Fintiv compelling merits determination. Then on March 13, 2023, the Federal Circuit issued an opinion in APPLE INC. v. Vidal, No. 22-1249, remanding for consideration of whether PTO guidance on discretionary denials was improper because it was not promulgated through notice-and-comment rulemaking under 5 U.S.C. § 553. Clearly, there are several factors at play in this evolving area of PTAB practice.

Discretionary denials fall in three broad categories: 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.

Listen as our authoritative panel of IP attorneys examines the Federal Circuit opinion in Apple v. Fintiv, precedential decisions on all types of 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. Guidance
    3. Precedential decisions
  2. Apple v. Vidal
  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

Mills, Gracie
Gracie K. Mills

Finnegan Henderson Farabow Garrett & Dunner

Ms. Mills focuses on post-grant proceedings at the Patent Trial and Appeal Board of the U.S. Patent and Trademark...  |  Read More

Ward, Trenton
Trenton A. Ward

Finnegan Henderson Farabow Garrett & Dunner

As a former Lead Administrative Patent Judge at the Patent Trial and Appeal Board, Mr. Ward was on the front lines of...  |  Read More

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