In re SAP America: Sharpening the Dispute over PTAB Discretionary Denials
Patent – Patently-O 2025-07-16
Summary:
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:
- SAP - Petition
- SAP - PIPLA Amicus
- SAP - USMADE Amicus
Arguing Against Mandamus:
- SAP - Cyandia Response
- SAP - USIJ Amicus
- SAP - PTAAARMIGAN Amicus
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).