by Dennis Crouch
The Federal Circuit continues to grapple with fundamental questions surrounding the USPTO’s broad discretionary authority to deny Inter Partes Review (IPR) petitions. Both implementation issues by former Director Vidal as well as the about-change by Acting Director Stewart.
- Dennis Crouch, SAP’s Mandamus Petition Challenging Trump Admin’s Discretionary Denial Policy Shift, Patently‑O (July 2, 2025).
- Dennis Crouch, Motorola Follows SAP with Mandamus Challenge to Acting Director Stewart’s IPR Policy Reversal, Patently‑O (July 10, 2025),.
In two recent posts, I discussed the pending In re SAP, 25-132 (Fed. Cir. 2025), mandamus action that challenge the "retroactive" actions by Director Stewart -- particularly rescinding the 2022 "Vidal Memo," which had provided explicit safe harbors for IPR petitions to avoid discretionary denials. SAP argues that Stewart’s reversal constitutes an unlawful retroactive policy shift, violates due process, and exceeds administrative authority. Several new briefs opposing mandamus have now been filed in the case, with the USPTO's response expected July 21, 2025, following an extension.
Supporting Mandamus:
Arguing Against Mandamus:
This dispute hinges upon the USPTO’s internal guidance documents governing discretionary denials of IPR petitions under the Fintiv framework, originally developed in PTAB precedent under Director Iancu (favoring patentees) and later modified by Director Vidal (favoring petitioners). SAP relied on Vidal’s 2022 guidance, which offered two clear safe harbors: (1) a broad Sotera stipulation in which petitioners agree not to pursue overlapping invalidity grounds in parallel litigation, or (2) a petition presenting a “compelling” case for invalidity. The rescission announced by Chief Judge Boalick in early 2025 withdrew these safe harbors and ultimately expanded upon the original NHK-Fintiv factors to include additional justifications for discretionary denials. The new approach was then retroactively applying to pending petitions such as SAP’s that included a Sotero stipulation. After initially meeting the standards set under Vidal’s memo, SAP’s petition was nevertheless denied under the revived, broader factors. The PTAB specifically rejected SAP’s stipulation as insufficient, stating that SAP could still raise "system" prior art defenses not covered by the stipulation in parallel district court litigation, thus undermining judicial economy and efficiency.
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