PTAB Shake-Up: Stewart’s Relentless Discretionary Denials Reshape Patent Strategy

This change follows a March 2024 memo from Stewart that formalized a two-step IPR process: first, a discretionary denial review handled by the director, followed only then by full PTAB merits review if approved. Under this process, patent owners can file a detailed motion seeking discretionary denial within two months of a petition’s filing. Petitioners have one month to respond, and the director aims to issue a decision within another month. Only if the petition survives this first hurdle does the PTAB proceed to evaluate the case on its merits.

What makes this wave of denials unique is the expanded range of discretionary factors Stewart is considering. While earlier Fintiv rules focused primarily on overlapping district court litigation, Stewart is now applying a broader lens. Her decisions evaluate a mix of public policy, economic impact, patent history, settled expectations of patent owners, national security concerns, reliance on expert evidence, and even PTAB workload. In one denial, Stewart cited the potential effect of a six-year damages limitation as a reason not to institute a review—signaling a willingness to explore creative legal angles for denial.

These developments have significant strategic implications. Petitioners must now go beyond technical merits and build persuasive arguments addressing discretionary denial risks. They need to preemptively engage with factors that previously held less weight, like the timing of validity challenges, impact on public interest, and clarity of expert support. On the other hand, patent owners are now in a stronger position, as they can invoke these broader criteria to shield their patents from review. Many experts are now advising litigators to treat discretionary denial strategy as a core component of their IPR filings—on par with Federal Circuit rulings in terms of complexity and impact.