"The petition argues that Dir. Stewart's novel denial criteria were imposed without the notice-and-comment rulemaking required by the Administrative Procedure Act, exceed the Director's statutory authority under 35 U.S.C. § 314(a), and were applied retroactively to Instacart's petition in violation of due process. The petition argues that the NPRM is tacit admission of the rulemaking requirement."
"The wave began after Acting Director Coke Morgan Stewart rescinded former Director Kathi Vidal's June 2022 guidance memoranda, which had provided "safe harbors" for petitioners who stipulated not to pursue the same prior art in parallel litigation (so-called Sotera stipulations). Following that rescission, the PTAB expanded its use of discretionary denials based on expanded Fintiv factors, which balance whether to institute IPR when parallel district court litigation is pending."
Instacart filed a mandamus petition at the Federal Circuit contesting the Patent Office's denial of IPR institution. The petition contends that Director Stewart imposed novel denial criteria without the notice-and-comment rulemaking required by the Administrative Procedure Act, exceeded statutory authority under 35 U.S.C. § 314(a), and applied those criteria retroactively, violating due process. The petition cites the USPTO's Notice of Proposed Rulemaking as a tacit admission that rulemaking was required. The case is one of several similar mandamus petitions following rescission of prior guidance and an expansion of Fintiv-based discretionary denials, with two additional discretionary grounds introduced through PTAB decisions.
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