Navigating the Post-Vidal Patent Landscape

Erick

Welcome to the first episode of the PTAB Podcast, where we talk about the PTAB, including new law, procedures, strategy, and pretty much anything else affecting those who practice before the Patent Trial and Appeals Board and those who have patents that are being attacked at the PTAB.

Erick

As always, the views and opinions expressed in this podcast do not necessarily represent those of Brown Rudnick. This podcast is presented for informational and educational purposes only.

Erick

Today, I am here with my friend and patent litigator extraordinaire, Dr. Angela Liu. Thanks for joining me today, Angela!

Dr. Angela Liu

I am honored to be here with you, Erick! Let's talk some PTAB!

Erick

Alright, let's dive right in. So, for those not in the weeds of patent litigation day to day—

Angela

Like us.

Erick

Exactly. You might have missed this recent big shift coming out of the United States Patent and Trademark Office. They just rescinded the 2022 Vidal Memo, and that brings some... well, let's call it renewed unpredictability to the PTAB discretionary denial process. Angela, you wanna give us the quick version of what that memo was trying to do?

Angela

Sure. The Vidal Memo was essentially a set of rules meant to rein in the PTAB's use of what's called the Fintiv framework. It created more predictable guidelines for deciding whether an IPR or PGR—inter partes or post-grant review—could move forward. The main idea was to ensure that strong petitions weren’t blocked solely because a parallel district court case was speeding along. It also excluded ITC cases from consideration and put some weight on petitioner stipulations to avoid duplicating invalidity arguments between proceedings. Pretty straightforward when you sum it up like that, right?

Erick

Right, but now all of that’s changing. By pulling the Vidal Memo, the USPTO has given the PTAB back its broader discretion—meaning the Board can deny petitions more freely based on factors like aggressive district court timelines.

Angela

And that's the kicker, isn't it? Because now we’ve got petitioners, especially accused infringers, feeling like the guardrails have just been yanked off.

Erick

Well, "feeling" is probably putting it lightly. I mean, they’re definitely concerned. Under the Vidal Memo, if you had a strong petition—like with compelling evidence of unpatentability—it didn’t matter if the trial date was looming. You’d get your shot. But now? If you're in a fast-moving court, like, say, the Western District of Texas, you might not even get to the starting line.

Angela

And that's exactly what many patent owners have been hoping for. Those district court timelines and procedural postures, as they're called, could now hold more sway over the PTAB’s decisions. Which, let's be honest, shifts the balance of power.

Erick

Big time. Patent owners, especially the ones with fewer resources—the universities, the SMEs—they love this shift. It makes it harder for petitioners to drag them into multiple proceedings at once.

Angela

But on the flip side, it means the PTAB could deny even a slam-dunk petition just because the parallel litigation looks like it might resolve things instead. And, honestly, that upsets a lot of people who think the focus should be on the merits of the patent challenge, not on scheduling technicalities.

Erick

Right, and then there’s the timing question—why now? Why is the USPTO rescinding this memo at this particular moment?

Angela

Well, it’s not like agencies just... feel like changing policy for fun. This is usually political, right? The concern seems to be that the Vidal Memo, although well-intentioned, might’ve tied the PTAB’s hands too tightly. It made managing their docket harder, and let’s face it, judicial efficiency might’ve taken a hit too.

Erick

That’s a good point. If a district court has already invested heavily in a case—claim construction, discovery, all the fun stuff—it can seem counterproductive for the PTAB to start up from scratch over there. That’s where this broader discretion under Fintiv comes in handy, at least for procedural efficiency.

Angela

But! And it's a big "but"—that broader discretion also means less predictability. Petitioners now have to think twice, or maybe three times, about whether their case will even be heard at the PTAB. And unpredictability? That’s anathema to good legal strategy.

Erick

Totally. And, I mean, reactions to this rescission are already mixed. Some folks in the patent bar are thrilled. They're saying, "Yes, finally! Back to a flexible framework that gives patent owners a real chance," while others are like, "Great. Just what we needed—more uncertainty."

Angela

And you know what? Both sides are kinda right. The flexibility can be good in some situations. But unpredictability forces everyone to spend more time and money hedging their bets. It’s a double-edged sword.

Erick

Absolutely. What’s clear is that this decision has the potential to shake things up—for better or worse. And how this plays out will depend on where the PTAB draws the line on using its discretion moving forward.

Angela

So, after covering all the ins and outs of the Vidal Memo’s rescission and its implications, let’s drill down into some of the key factors under Fintiv guidelines that are now back in play. Erick, let’s start with the first one: stay of litigation.

Erick

Sure. This one’s pretty straightforward, but also arguably one of the most decisive factors. It asks whether the district court is likely to grant—or has already granted—a stay if the PTAB goes ahead with review. A stay essentially pauses the court case, so the PTAB can take over.

Angela

And if the court doesn’t grant a stay?

Erick

Well, it’s bad news for petitioners. Especially if the district court process is barreling toward trial. The PTAB may think, "Look, the court’s already handling this, no need for us to step in."

Angela

Makes sense. Next up is trial date proximity. And this one gets, uh, contentious.

Erick

Definitely. Courts like the Western District of Texas are infamous for their so-called “rocket dockets,” where trial dates are set aggressively fast—sometimes unrealistically so, depending on who you ask. If the PTAB sees that a trial date is right around the corner, it’s often enough reason to deny review entirely, even if the trial schedule ends up... well, slipping later.

Angela

It’s like playing chicken, honestly. Because petitioners know that. They know a trial date alone could kill their chances at the PTAB. But it’s such... shaky ground to deny a potentially strong challenge because the trial “might” happen soon.

Erick

Totally. But it’s also a way to keep cases moving. PTAB review adds time, so if a district court trial is imminent, letting it resolve everything might make more sense. Efficient? Sure, sometimes. Fair? That depends on which side you’re on.

Angela

Okay, then we’ve got investment in parallel proceedings. This factor’s another biggie. It basically asks: how much work has already been done in the district court?

Erick

Exactly. If the judge has already ruled on, say, claim construction or if discovery is mostly complete, the PTAB might think, "Why double up? Let the district court handle it." It’s an effort to avoid duplicating effort, but it’s also tricky.

Angela

Yeah, because investment doesn’t necessarily mean the district court is the best place for the case. It just means, well, someone’s already sunk time and resources into it. Is that really the best metric?

Erick

You’re not wrong. But remember, Fintiv isn’t about perfection; it’s about balancing factors. Now, the fourth factor—overlap of issues—directly tackles redundancy. If the same invalidity arguments and evidence are being brought up in both venues, the PTAB may decide it’s overkill to review.

Angela

Except when the PTAB could arguably do a better job, right?

Erick

Exactly. That’s the rub. The PTAB is arguably better equipped for deep dives into invalidity questions. But with heavy overlap, they might defer to the district court anyway. It’s another reason why petitioners dislike how discretionary denials play out.

Angela

Alright, factor five: parties involved. This one seems like it should be simple, but it’s not always.

Erick

Yeah, it’s a question of who’s who. Is the PTAB petitioner also a defendant in the district court? Are they a real party in interest? That can matter because if it’s the same party across both cases, there’s more pressure on the PTAB to step back, especially if the district court is already active.

Angela

And finally, the wildcard—other circumstances. This is the PTAB saying, "Leave us a little room for the weird stuff."

Erick

Right. Things like an ITC investigation reopening or active settlement discussions could fall here. Basically, anything unique that makes the PTAB pause and think twice about whether review is necessary. It’s the catch-all factor.

Angela

You know what? That’s really the beauty and the chaos of Fintiv. It’s all about balance, but it’s also... so subjective. The PTAB has leeway to weigh these factors however it wants for each case, and that’s what keeps everyone guessing.

Erick

And guessing means recalculating strategy—all the time. For both patent owners and petitioners.

Angela

So, Erick, after breaking down all those Fintiv factors, let’s talk about the biggest issue they collectively create—unpredictability. How do you think this affects petitioners, especially those relying on strong invalidity arguments?

Erick

Oh, it’s a huge gamble now, no question about it. See, before, they at least had a safety net with compelling arguments, right? You’d think, "Hey, if my petition is rock-solid, the PTAB has to hear it." Now? It doesn’t matter. The PTAB can say, "Cool petition, but we’re passing because, uh, the trial date is around the corner."

Angela

And the thing is, that feels arbitrary to a lot of folks, doesn’t it? Like, imagine you’ve poured months into crafting this ironclad petition, and then bam—it gets blocked purely on procedural grounds. That’s—

Erick

Infuriating?

Angela

Exactly. Infuriating. And I get it. Predictability is everything in legal strategy, and pulling the rug out like this makes risk assessments so much harder.

Erick

Absolutely. And that unpredictability means petitioners need to go above and beyond just making a strong case. They have to predict how the PTAB will weigh all these external factors—trial schedules, procedural overlap, even venue quirks. It’s like a game of chess where half the pieces are invisible.

Angela

But! And here’s the flip side—this isn’t exactly doom and gloom for everyone. Patent holders stand to gain here, don’t they?

Erick

Oh, for sure. Patent owners must be celebrating. Pulling the Vidal Memo tips the balance back in their favor, especially for those worried about defending on multiple fronts. With Fintiv in full force again, they can use procedural progress—things like trial dates and completed discovery—to make a solid case for discretionary denials. It keeps them from being bogged down by duplicative litigation.

Angela

And that strength goes beyond defense. It gives them leverage. Patent owners can push for settlements earlier, knowing petitioners now face bigger obstacles getting into the PTAB in the first place. That’s gotta feel like a major win for the universities and the SMEs, especially.

Erick

Totally. For those smaller players—companies that don’t have big litigation budgets—this means fewer simultaneous battles. They can focus their resources on the district court case and negotiate from a position of strength. Honestly, it levels the playing field. Well, somewhat.

Angela

But timing’s now the make-or-break factor, isn’t it? Petitioners under the gun to file IPRs or PGRs before district court cases gain steam. You’d better believe they’ve got to move fast, or risk being sidelined.

Erick

Exactly. Courts like the Eastern and Western Districts of Texas become these high-stakes arenas. Rapid trial schedules there could knock out a petition before it even gets off the ground.

Angela

And let’s not forget—this unpredictability might have broader repercussions, right? Settlements, forum shopping trends, even litigation strategy overall could shift because of this policy shift.

Erick

No doubt. In fact, we could see more disputes pushing towards settlement just to avoid the minefield of uncertainty. And for parties choosing forums? Fast dockets could become the new front line for strategic plays. Everyone’s gotta rethink their moves here.

Angela

So Erick, with this Fintiv framework reshaping the landscape, it’s clear that unpredictability can also be a tool. Patent owners seem to gain a big advantage here, and that definitely includes non-practicing entities, or NPEs. What’s their play in all of this?

Erick

NPEs definitely see this as a win. Think about it: they’re mostly focused on district court litigation, right? They want to keep everything in a single forum where they have control. With the Fintiv framework back, they don’t have to worry as much about a parallel PTAB review derailing the process.

Angela

And, correct me if I’m wrong, but this also impacts how they negotiate settlements, doesn’t it?

Erick

Exactly. If a petitioner knows their PTAB petition is likely to get denied because of, say, an aggressive court schedule, they’re more likely to settle early. It shifts the leverage toward patent owners, especially NPEs, whose whole business model is essentially built on those negotiations.

Angela

Okay, let’s move to the universities and research institutions. They’ve gotta be celebrating this, too, right?

Erick

Oh, absolutely. Universities tend to operate on tighter budgets—they can’t afford to fight on multiple fronts. By limiting the likelihood of parallel PTAB challenges, Fintiv helps them focus their resources on the district court case, which is often where they have the most at stake financially. It’s a lifeline for entities reliant on licensing revenue to fund research.

Angela

Right. And conserving resources isn’t just helpful—it’s critical for these guys. I mean, imagine trying to defend a patent in federal court while also fending off an IPR attack at the PTAB.

Erick

That’s the exact point. This framework helps level the playing field, at least somewhat, for smaller entities like universities that can’t match the firepower of tech giants or multinational corporations.

Angela

Speaking of smaller entities, I’m thinking about SMEs here. How do they fall into this mix?

Erick

They fall hard on the side of benefiting. SMEs, or small-to-medium enterprises, don’t have the resources—or frankly, the time—to fight battles on two fronts either. When petitioners have to act faster to avoid a discretionary denial, it reduces the chances of last-minute PTAB filings that could bog SMEs down in additional legal costs.

Angela

And that makes negotiating with them trickier for petitioners, yeah?

Erick

Oh, big time. The uncertainty shifts the balance, giving SMEs a stronger position during settlement discussions. The petitioners can’t rely on PTAB proceedings as a backup plan to apply pressure.

Angela

That sounds like a game-changer. But let’s talk specifics—how exactly do these discretionary denials push for earlier negotiations?

Erick

It’s straightforward, really. If petitioners know their chances at the PTAB are slimmer because of procedural factors—like the district court has an early trial date—they’re forced to come to the table earlier or risk losing outright in district court. Fintiv creates a new sense of urgency for both sides.

Angela

And that could mean more balanced settlements, especially for groups like SMEs or universities that might otherwise get buried under litigation costs.

Erick

Exactly. It’s not just about defending patents—it’s about ensuring those negotiations happen on a more level playing field. And, honestly, many patent owners are using that as leverage right now to get fair deals or even faster resolutions.

Angela

And that strategy shift applies to NPEs, universities, even large corporations, doesn’t it? Everyone plays a little differently in this new environment.

Erick

Right. Each group has unique stakes, but Fintiv’s return changes the equation in similar ways. For smaller, resource-strapped entities, it’s about conserving bandwidth. For larger players, it’s about protecting strategic patents without piling on more litigation. Across the board, it’s a chance for patent owners to hold the line more effectively.

Angela

Well, it sounds like this unpredictability isn’t so much chaotic as... strategic, depending on who you are.

Erick

Absolutely. And, honestly, it forces both petitioners and patent owners to sharpen their approaches. Early filings are gonna become the name of the game for petitioners who want to avoid losing their shot.

Angela

Alright, Erick, building on what you said about earlier filings being crucial, petitioners seem to be scrambling to keep up with these changes. What’s your take on how they can sharpen their strategies to navigate all this unpredictability?

Erick

Honestly? They need to start filing those petitions early—like really early. If you’re sitting on your hands, hoping the district court proceedings won’t gain momentum, you’re setting yourself up for failure. The earlier they act, the better their chances of avoiding a Fintiv-based denial.

Angela

But that can be tough, right? Filing too early means spending money upfront, when they might not even know the full scope of the district court case yet.

Erick

True, it’s a balancing act. Filing prematurely can cost more in the long run if the case doesn't take off as expected. But waiting too long? That’s a huge risk, especially if there's a fast-moving court involved.

Angela

Speaking of fast-moving courts, venue selection seems more critical than ever now. Petitioners are gonna be eyeing slower dockets like hawks, aren’t they?

Erick

Absolutely. If you’re a defendant, you’ll do anything to avoid landing in places like the Western District of Texas, where trial schedules are, let’s say, “ambitiously fast.” Slower courts, like Delaware, give petitioners more breathing room to file their PTAB petitions before the district court heats up.

Angela

Though I imagine that not everyone gets to pick their forum. Venue shuffling isn’t exactly simple.

Erick

Right. You can’t just snap your fingers and say, “Hey, judge, I’d prefer to litigate elsewhere.” But if there’s a legitimate basis—like the convenience of parties or witnesses—you might be able to transfer your case to a slower district. And trust me, petitioners will be looking for any opportunity to pull those strings.

Angela

Okay, so they’re filing early and maybe trying to transfer venues. But for companies with tight budgets, this has to be a nightmare, right? They’re burning resources just to hedge against uncertainty.

Erick

Oh, no question about it. The costs pile up fast. Early filings might save you from a denial, sure, but they come at a price—and not everyone can afford that luxury. It’s like placing your bet before you’ve even seen the cards.

Angela

And let’s be real—it’s not just the money. It’s the unpredictability that really throws a wrench into things. How can petitioners plan their cases when half the decision hinges on procedural factors, not the actual merit of their arguments?

Erick

Exactly. And the PTAB’s broad discretion is a wild card. Petitioners have to consider not just the strength of their invalidity arguments but also the court’s trial schedule, how much work’s already been done there, and whether their case overlaps with the district court’s issues. It’s like solving a legal Rubik’s cube.

Angela

So what do they do? Just go all-in on parallel strategies?

Erick

Pretty much. They’ll need contingency plans—like considering ex parte reexaminations if an IPR seems too risky. And even then, they might have to get creative with licensing talks or settlements. It’s not ideal, but that’s the reality now.

Angela

Well, it sounds exhausting, honestly. But for patent holders, this unpredictability kind of works in their favor, doesn’t it? It forces petitioners to think twice before throwing down the gauntlet.

Erick

Oh, it’s a huge win for patent owners. They’ve already got Fintiv in their corner, and now their opponents are facing mounting expenses and tighter filing windows. If I’m a patent owner, I’m loving this new dynamic.

Angela

But for petitioners? Yikes. They’ve gotta get smarter—and faster—or their arguments might never even see the light of day.

Erick

Let me share a real-world example that highlights these challenges. One of my clients, a small to medium-sized enterprise, found themselves navigating a particularly fast-moving jurisdiction. Imagine dealing with trial dates being set only three months after filing—it was brinkmanship taken to an entirely new level.

Angela

Yikes. Sounds like their options were, uh, limited. What did they end up doing?

Erick

Well, we had to act fast. Their instinct was to go for an early IPR filing, but then came the internal debate—and I mean, it was heated. Filing the petition cost money they didn’t exactly have lying around, but waiting for more info from the district court felt like standing on a ticking time bomb.

Angela

So the classic cost-versus-risk equation, right? And with Fintiv, that calculation gets a lot murkier.

Erick

Exactly. And here's the kicker—they weren’t just dealing with timing. The district court threw us for a loop when it decided to push back the trial date suddenly. We had filed the IPR thinking we were under the gun, you know? Then all of a sudden, the "imminent trial" factor wasn’t so imminent anymore.

Angela

Wait, they rescheduled? How far out are we talking here?

Erick

Several months. It totally changed the game. It’s like building your whole defense strategy with one set of assumptions, only to have the rug pulled midway. The delay gave the PTAB more breathing room to decide on whether to deny the IPR, but it also meant the court had sunk more work into their case by then. We suddenly had to recalibrate our entire approach.

Angela

Whew. Sounds like whiplash. How’d you pivot?

Erick

We doubled down on monitoring the court filings—literally, like, daily check-ins—and made sure our IPR arguments were airtight. Luckily, the PTAB didn’t deny us outright, likely because of how strong the petition was. But I’ll be honest, it felt like running a marathon blindfolded.

Angela

Yeah, and the volatility of docket schedules played a huge role, didn’t it? Without Fintiv’s return, they might’ve had a clearer idea when to act.

Erick

Exactly. And, look, that’s the lesson here for anyone dealing with this new landscape. You can’t just rely on your petition’s merits anymore—you’ve got to keep tabs on your court’s every move. Balance PTAB challenges with settlement opportunities, and always, always stay ready to pivot.

Angela

So, Erick, speaking of staying ready to pivot, let’s dive into something everyone’s buzzing about—how can petitioners rework their strategies to sidestep these unforeseen discretionary denials? What’s the first step?

Erick

Honestly? Timing is everything. The sooner you can file your IPR or PGR petition, the better. You’ve got to anticipate how the district court proceedings will unfold. If you wait too long and the case gains any kind of momentum, you’re just giving the PTAB more reasons to deny your petition outright.

Angela

Right, but there’s a trade-off there, isn’t it? I mean, filing too early means throwing money into a petition before you even have all the pieces from the district court process. That can’t be an easy call for petitioners to make.

Erick

It’s not, and that’s where strategy has to come into play. You’re basically gambling on whether the cost of filing early outweighs the risk of getting denied later. And timing aside, it’s not just about filing fast—it’s about filing smart. This brings us to Sotera stipulations.

Angela

Ah, yes, the promise not to rehash the same invalidity arguments in district court. Considering the Fintiv framework’s resurgence, how much weight are those stipulations holding now?

Erick

Well, they’re not the golden ticket they were under the Vidal Memo, but they’re still incredibly useful. They signal to the PTAB that you’re not trying to duplicate efforts in both venues. It’s a move that might tip the scales in your favor, especially if your petition is borderline to begin with.

Angela

So it sounds like it’s worth including a Sotera stipulation for most petitioners. But to me, the second big consideration has to be venue, right? Slower jurisdictions should give petitioners more time to maneuver.

Erick

Exactly. If you’re a defendant, you want to avoid fast-track courts like the Western District of Texas. Slower jurisdictions like Delaware—or even places where trial dates are more prone to slipping—are tactical gold. The longer the district court timeline, the more room you have to get your IPR petition heard without those Fintiv factors coming back to haunt you.

Angela

Easier said than done, though. Transferring to another district isn’t guaranteed. And if you don’t have legitimate grounds for it, you’re stuck where you are.

Erick

True, but if you can make the case for convenience of witnesses or other factors, it’s worth the shot. The point is, every extra day you can buy your PTAB petition is priceless under this new framework.

Angela

And then there’s the issue of resources. Filing early means burning cash upfront, especially for smaller entities who don’t have massive litigation budgets. How are petitioners supposed to manage that?

Erick

Yeah, it’s a tough balance. The reality is that not every company can afford to play the long game. Petitioners need to evaluate whether the cost of filing early and including stipulations is worth the potential benefit of avoiding a Fintiv-based denial. It’s not a perfect solution, but it’s better than being shut out entirely.

Angela

So it’s a mix of early action, smart stipulations, and venue strategies. But honestly, this whole thing just feels... exhausting.

Erick

It is. And that’s what makes this unpredictable climate so nerve-wracking for petitioners. They’re not just putting together strong petitions anymore—they’re navigating a minefield of procedural hurdles that can trip them up before they get anywhere close to the finish line.

Angela

Erick, it’s such a tough landscape for petitioners right now. With all these shifting obstacles, where should they start to make sure their cases even get a fighting chance?

Erick

Step one? Timing. You’ve gotta file your IPR or PGR petitions early. Like, really early. I’m talking first few months of litigation, before the district court starts gaining any momentum. If you give the PTAB a reason to say the case is already too far along, you’re done.

Angela

But that gets tricky, doesn’t it? Filing early often means putting cash on the table before you’ve even got all the facts from the district court proceedings. For smaller players, that’s a pretty steep gamble.

Erick

It is. And that’s exactly why petitioners have to play a careful game. Filing early is a big expense upfront, no doubt, but it’s still better than pouring months of effort into your case, only to get denied before it even starts. It's a calculated risk.

Angela

Alright, so timing matters. But what about Sotera stipulations? Those were a big defense against Fintiv denials under the Vidal Memo, right? Are they still holding any weight now?

Erick

They are, but not as much as before. The Vidal Memo gave stipulations a lot of pull—basically, a line in the sand saying, "I’m not gonna reuse these invalidity arguments in district court." Now that the memo’s out, those stipulations are more of a helpful nudge than a guarantee. Still, they’re worth including, especially if your petition is skating on thin ice.

Angela

So, kind of a "better safe than sorry" move. Got it. But let’s talk strategy beyond timing and stipulations. Venue—how much does it matter now in this Fintiv world?

Erick

Angela, it matters a ton. If you end up in a district like the Western District of Texas, where trial dates get set almost before you’ve had your morning coffee, you’re in real trouble. The PTAB is gonna glance at that timeline and think, "Nope, not worth jumping in."

Angela

But slower venues, like Delaware or California’s Central District, give petitioners more breathing room?

Erick

Exactly. Those courts tend to schedule trials further out, or their timelines are more flexible, which reduces the weight of Fintiv factors. Slower venues buy you time to get your PTAB petition in and evaluated on its merits, not just on scheduling quirks.

Angela

That sounds great in theory, but we both know not everyone has the luxury of picking their forum. If you’re stuck in a faster district, what then? Just cross your fingers?

Erick

Not if you can help it. If there’s even a sliver of justification, like witness convenience, you push for a transfer. Petitioners are getting creative here, looking for any chance to avoid rocket dockets.

Angela

Alright, so far we’ve got early filings, smart use of Sotera stipulations, and venue strategies. But, Erick, what does this mean for smaller companies? They don’t exactly have buckets of cash to burn on contingency plans.

Erick

No, they don’t. And for SMEs, it’s a double-edged sword. They’ve gotta weigh the cost of investing upfront in an early IPR against the risk of a discretionary denial later. For a lot of them, that gamble isn’t just expensive—it’s brutal.

Angela

And even if they can manage the cost, this unpredictability still throws a wrench into planning. I mean, you can have the strongest invalidity case in the world, but if you’re up against tight court schedules or procedural overlap, you’re out before you begin.

Erick

Exactly, it’s not just about your case anymore. It’s about the procedural chess game—navigating all these external factors while trying to control costs. It’s exhausting, honestly.

Angela

Yeah, and it puts patent holders in the driver’s seat, doesn’t it? This kind of environment forces petitioners to rethink every move they make.

Erick

It does. Patent owners are thriving under this uncertainty. If you’re a petitioner, you’ve got to work smarter and faster—because one misstep, and your case might not even make it to the PTAB.

Erick

Speaking of working smarter and faster, I recently dealt with a case that perfectly illustrates these challenges. It was a mid-sized tech company—well-resourced, but not exactly swimming in excess capital. They got hit with a suit in the Western District of Texas, where, as we talked about, things move ridiculously fast. Sure enough, trial was scheduled just four months out. That left very little room for error.

Angela

Wait, four months? That’s no time at all.

Erick

Exactly. It’s one of those “rocket docket” courts, right? So, we’re sitting there thinking, how do we deal with this timeline? An IPR was definitely on the table—but filing it early wasn’t cheap. And Fintiv’s back, so the clock’s ticking. The question was, do we pull the trigger fast or wait it out a bit to see what happens in court?

Angela

That sounds stressful. Did they lean toward filing right away?

Erick

Well, at first, they hesitated. Filing early meant spending big upfront, with no guarantee the PTAB wouldn’t deny it anyway based on the trial date. On the other hand, delaying came with its own risks—waiting too long could’ve made the Fintiv factors even harder to dodge.

Angela

It’s like having to choose the lesser evil, really.

Erick

Pretty much. Eventually, the client decided to file, but we worked in a Sotera stipulation—you know, promising not to raise the same invalidity arguments in district court. It was a calculated move to try to tip the scales in our favor.

Angela

Right. And those stipulations still hold weight, even post-Vidal Memo, yeah?

Erick

They do, but like I said, it’s not the golden ticket it used to be. Still, it probably helped, because here’s where things got wild—the district court trial date, out of nowhere, got pushed back six months. Suddenly, we weren’t under the gun anymore, but we’d already spent the resources filing the IPR.

Angela

Ugh. That’s rough. So, what does that kind of shift do to your strategy?

Erick

It totally upended it. We went from being hyper-focused on beating the trial deadline to reconsidering all aspects of our timing. At that point, it became about staying hyper-vigilant. We tracked every court filing, every procedural development. And you know what? By the time the PTAB ruled on the petition, our case was strong enough to move forward. But it was touch and go for a while.

Angela

That unpredictability must’ve been exhausting for your client, though. A single reschedule changed everything.

Erick

Yeah, and that’s the big takeaway. With so much volatility in court schedules—and now the PTAB’s broader discretion—petitioners have to monitor every detail obsessively. Filing early is critical, sure, but so is being ready to adapt your entire plan if the ground shifts under you.

Angela

That point about staying adaptable really resonates, Erick. Now, thinking about startups, they’re particularly vulnerable, with limited resources and often just one shot to get it right. How do they tackle the post-Vidal landscape compared to before?

Erick

It’s a stark difference, Angela. Under the Vidal Memo, startups with strong invalidity arguments could expect the PTAB to take a fair look, even if a district court trial was set to happen soon. The predictable framework acted, uh, almost like an insurance policy for well-prepared petitioners.

Angela

Right, because if the case was strong, the memo’s guidance prioritized substance over timing. Basically, startups could count on their preparation carrying weight, right?

Erick

Exactly. Let’s call that Hypothetical A. In that world, a startup could focus their limited resources on putting together rock-solid petitions. They’d bank on the PTAB allowing their case to proceed even if the district court was moving quickly. It let them gamble—strategically.

Angela

And now?

Erick

Oh, now it’s a different ballgame entirely. Hypothetical B—and welcome to the current landscape—means startups have to prepare for the PTAB to say, “Sorry, timing issues trump your merits.” If the district court trial is coming up fast, or if the case is even moderately advanced, the startup might not even get their petition through the door.

Angela

That’s gotta feel like running a race where the finish line keeps moving. Especially with limited funds—those filing fees alone are no joke.

Erick

That’s exactly the problem. Filing fees, early prior art searches, and possibly adding stipulations, all start to weigh heavy on a startup’s budget. They can’t afford to throw money around carelessly, but now they also can’t risk waiting too long to file either. The timing has to be perfect... and good luck with that.

Angela

So what’s their best move, then? How do they make smart decisions when the system feels this unpredictable?

Erick

Well, step one is adaptability. They’ve gotta weigh everything—when to file, what kind of venue they’re in, what court schedules look like, even how much prior art to dig into early. It’s less about playing offense and more about, you know, managing risk.

Angela

And knowing when to pull back. Like instead of filing a risky IPR, maybe looking at alternative strategies—settlements, ex parte reexaminations—things that don’t burn through the budget as fast.

Erick

Exactly. This is where specialized legal advice becomes critical. I mean, no two cases are the same, and with this broader discretion back in play, startups need someone who can read the room and adjust on the fly. You’re not just navigating law; you’re navigating a whole ecosystem of moving parts.

Angela

And on top of all that, startups need to stay hyperaware of district court dynamics—trial dates, procedural progress, anything that could sway the PTAB’s decision. It’s a lot, honestly.

Erick

It is. But here’s the silver lining—if startups can adapt to this landscape, they might actually come out stronger. The unpredictability forces them—and really, all petitioners—to be smarter and more strategic than ever before.

Angela

Right. And at the end of the day, if they learn to shift from reactive to proactive, they might turn this chaotic landscape into an opportunity.

Erick

And there it is. That’s the takeaway—adapt, strategize, and seek the right advice. Anything less, and you’re not gonna make it out of this maze.

Angela

Well, on that note, I think we’re at our own finish line for today. Erick, as always, it’s been a pleasure sparring with you over these twists and turns in patent law.

Erick

The pleasure’s all mine. And to everyone listening, remember—whether you're navigating Fintiv or something else, the rules might change, but the need for sharp strategy never does. Until next time, folks.

Erick

That's it for this episode of the PTAB Podcast! Thanks for joining us, and as always, please contact me if you have any questions, comments, or podcast ideas! Until next time, be well!