The Fintiv factors are six considerations the Patent Trial and Appeal Board uses to decide whether to decline an inter partes review petition because a related court case is already moving toward trial. They come from the 2020 precedential decision in Apple Inc. v. Fintiv, Inc., and they let the Board avoid duplicating work a federal court or the International Trade Commission is already doing on the same patent. The framework was loosened by USPTO guidance in 2022, then reset in early 2025 when the agency rescinded that guidance and restored the original balancing test as the governing standard.
The Six Factors the Board Weighs
No factor decides the outcome by itself. The Board looks at all six together.1United States Patent and Trademark Office. Apple v Fintiv – Order Conduct of the Proceeding
- Likelihood of a stay. If the district court is likely to pause its case while the PTAB reviews the patent, the Board leans toward moving forward. A stayed court case removes the duplication concern.
- Trial date proximity. The Board compares the court’s scheduled trial date to its own deadline for a final written decision. If the trial will finish first, denial is more likely. The Board has also looked at median time-to-trial statistics for the specific court, since scheduled dates often slip.
- Investment in the parallel proceeding. When the parties and the court have already put significant work into discovery, expert reports, and pretrial motions, the Board sees less reason to open a second front.
- Overlap of issues. The more the IPR petition raises the same invalidity arguments being litigated in court, the greater the risk of inconsistent decisions and the stronger the case for denial.
- Party relationship. If the IPR petitioner is the same defendant fighting the patent in court, the Board treats the two proceedings as more redundant than when the petitioner is an unrelated party.
- Other circumstances, including the merits. A catch-all covering anything else relevant. The strength of the invalidity arguments lives here.
The sixth factor does more work than its placement suggests. A petition with genuinely strong invalidity arguments can tip the balance toward institution even when the trial date and party overlap point the other way. The Board is reluctant to shield a likely-invalid patent from review just because a court happens to have set an earlier trial date.
What Changed in 2025
In June 2022, then-Director Kathi Vidal issued a memorandum that softened Fintiv in two ways.2United States Patent and Trademark Office. Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation It created a “compelling merits” exception that essentially guaranteed institution when a petition was highly likely to prevail, and it exempted cases where the parallel proceeding was at the ITC rather than a district court.
On February 28, 2025, the USPTO rescinded the memorandum.3United States Patent and Trademark Office. USPTO Rescinds Memorandum Addressing Discretionary Denial Procedures Follow-up guidance on March 24, 2025 restored the original six-factor balancing test and stated that “compelling merits alone is not dispositive.”4United States Patent and Trademark Office. Guidance on USPTOs Recission of Interim Procedure for Discretionary Denials Strong merits still count under factor six, but they no longer function as an automatic override. The ITC exemption is also gone, so Fintiv now applies when the parallel case is an ITC investigation.
The same reset affected Sotera stipulations, in which a petitioner promises not to run the same invalidity arguments in the court case that it is raising at the PTAB. Under the 2022 guidance, a Sotera stipulation effectively blocked discretionary denial. After the rescission, it is one factor in the overall analysis rather than a guarantee.5United States Patent and Trademark Office. Interim Director Discretionary Process If the petitioner still has other invalidity theories or overlapping prior art in play in court, the stipulation may not carry much weight.
The New Bifurcated Institution Process
Two days after the rescission guidance, on March 26, 2025, the USPTO announced a procedural change that separates discretionary questions from merits questions.6United States Patent and Trademark Office. Memorandum – Interim Processes for PTAB Workload Management
The Director now decides the discretionary question personally, consulting at least three senior PTAB judges who are walled off from the panel that will handle the merits. If the Director denies the petition on discretionary grounds, the case ends there. If not, a standard three-judge panel takes over the merits.
The briefing runs on a set schedule. The patent owner has two months from the filing-date notice to submit a brief requesting discretionary denial, up to 14,000 words. The petitioner has one month to respond. If the patent owner never files a discretionary denial brief, the Director skips the discretionary stage and the petition goes straight to a merits panel.7United States Patent and Trademark Office. FAQs for Interim Processes for PTAB Workload Management
The Director can also weigh considerations beyond the original six factors: whether the challenged claims have already been adjudicated elsewhere, whether new law affects patentability, how heavily the petition leans on expert testimony, the parties’ settled expectations, and compelling economic, public health, or national security interests.6United States Patent and Trademark Office. Memorandum – Interim Processes for PTAB Workload Management
The bifurcated process applies only where the patent owner’s preliminary response deadline had not yet passed on March 26, 2025. Older cases still run under the single-panel approach using Fintiv, General Plastic, and Advanced Bionics.7United States Patent and Trademark Office. FAQs for Interim Processes for PTAB Workload Management
Where the Discretion Comes From
The Board’s power to deny an otherwise sufficient petition comes from 35 U.S.C. § 314(a), which says the Director “may not authorize an inter partes review to be instituted unless” the petition shows a reasonable likelihood of success on at least one claim.8Office of the Law Revision Counsel. 35 USC 314 – Institution of Inter Partes Review Courts have read the “may not…unless” language as permissive: clearing the threshold makes institution possible, not required. Fintiv sits in that gap.
Fintiv is not the only discretionary denial track. A separate provision, 35 U.S.C. § 325(d), lets the Director turn away petitions that recycle “the same or substantially the same prior art or arguments” the USPTO already saw during original examination.9Office of the Law Revision Counsel. 35 USC 325 – Relation to Other Proceedings or Actions And when the same petitioner files a follow-on IPR against the same claims, the General Plastic factors govern: whether the petitioner knew about the new prior art the first time around, how long they waited, and whether they appear to be taking a second bite. Those questions are separate from Fintiv, though under the new bifurcated process they all reach the Director at the same discretionary stage.
Whether a Fintiv Denial Can Be Appealed
For practical purposes, no. Section 314(d) provides that the Director’s decision “whether to institute an inter partes review…shall be final and nonappealable.”8Office of the Law Revision Counsel. 35 USC 314 – Institution of Inter Partes Review The Federal Circuit has consistently held that this bars judicial review of discretionary denials, including Fintiv denials, and has rejected efforts to route around it through the Administrative Procedure Act.
The only real option is internal. The Director can review panel decisions on her own initiative, and parties can email the Director’s office to raise concerns. That is a discretionary process on top of a discretionary process, without guaranteed briefing or timelines.
The Cost of Losing on Fintiv Grounds
An IPR petition challenging up to 20 claims carries a $23,750 request fee, with another $28,125 due if the Board institutes review, for a combined $51,875 in USPTO fees.10United States Patent and Trademark Office. USPTO Fee Schedule When the petition is denied at institution, including on Fintiv grounds, the post-institution fee is refunded. The request fee is not.
A petitioner who loses on discretionary timing is out the $23,750 request fee plus whatever went into attorney work and expert declarations preparing the petition. With PTAB counsel commonly charging above $500 per hour, the total exposure on a denied petition can run well into six figures. That financial reality is why patent owners fight hard for a Fintiv denial and why petitioners now build their filing strategy around the trial date in the parallel case from the start.