In recent months, the U.S. Patent and Trademark Office (USPTO) has implemented significant changes to its discretionary denial policies for inter partes review (IPR) and post-grant review (PGR) proceedings. These adjustments have led to a notable increase in petition denials, prompting several companies to challenge the new policies through mandamus petitions to the U.S. Court of Appeals for the Federal Circuit.
On February 28, 2025, the USPTO rescinded its June 2022 memorandum that had provided guidance on discretionary denials, particularly in cases with parallel district court litigation. This rescission effectively reinstated the broader discretionary framework established by the precedential Fintiv decision, which outlines factors the Patent Trial and Appeal Board (PTAB) considers when deciding whether to institute a review in light of concurrent litigation. The return to this framework has reintroduced unpredictability in the IPR process, as petitioners can no longer rely on the previous guidance that had curtailed the use of Fintiv-based discretionary denials. ([ropesgray.com](https://www.ropesgray.com/en/insights/alerts/2025/03/uspto-rescinds-interim-guidance-on-discretionary-denials?utm_source=openai))
Subsequently, on March 26, 2025, Acting USPTO Director Coke Morgan Stewart issued a memorandum introducing a bifurcated approach to the institution decision process. Under this new procedure, the decision to institute an IPR or PGR is divided into two phases: first, the Director, in consultation with at least three PTAB judges, assesses whether discretionary denial is appropriate; if not, the petition proceeds to a three-member PTAB panel for a merits-based evaluation. This bifurcation aims to manage the PTAB’s workload more effectively and address capacity constraints. ([wilmerhale.com](https://www.wilmerhale.com/en/insights/client-alerts/20250331-uspto-issues-memo-on-interim-process-for-ptab-discretionary-denial-evaluation?utm_source=openai))
In response to these policy shifts, several companies have filed mandamus petitions challenging the USPTO’s discretionary denial practices. Notably, on November 6, 2025, the Federal Circuit denied three such petitions from Motorola Solutions, Google, and SAP America. In these decisions, the court reaffirmed the USPTO Director’s broad discretion to deny or de-institute IPRs, emphasizing that such decisions are unreviewable under 35 U.S.C. § 314(d). The court also rejected constitutional and Administrative Procedure Act challenges to the rescission of prior guidance, underscoring the discretionary nature of the institution process. ([fitcheven.com](https://www.fitcheven.com/2025/11/17/federal-circuit-confirms-uspto-directors-broad-discretion-to-deny-or-de-institute-iprs/?utm_source=openai))
These developments highlight the evolving landscape of patent validity challenges and the increasing complexity surrounding the USPTO’s discretionary denial policies. Legal professionals and corporations must stay informed about these changes to navigate the patent review process effectively.