Trending at the PTAB: The Policies That Are Redefining IPR

1. Policy Shift Toward Resource Gatekeeping: The PTAB moved from adjudicatory decisions to a policy-driven approach, prioritizing efficient use of USPTO resources and limiting duplicative efforts through stricter Fintiv application.
   
   
2. Settled Expectations and Discretionary Denials: Patent owners' enforcement rights gained weight in discretionary decisions, requiring petitioners to justify review when patents have been in force for extended periods or show compelling reasons to override settled expectations. 
   
   
3. Procedural Standards and Compliance Tightened: New memoranda and precedential decisions imposed stricter petition requirements, including harmonized claim construction positions, real-party-in-interest-disclosures, and detailed prior art mapping. 

Part 1 of this article traced the evolution of Patent Trial and Appeal Board's inter partes review institution regime in 2025. Part 2 turns to the policy considerations behind that evolution.

The year marked a shift from adjudicatory institution decisions toward gatekeeping of the U.S. Patent and Trademark Office's resources and patent enforcement rights.

Fintiv Applied with Full Force Prevents Duplicative Efforts.

After the recission of the 2022 Fintiv memo, Fintiv returned with full force. A Sotera stipulation is highly relevant, but no longer dispositive.

In many cases, whether the district court would grant a stay is treated uncertain, and the Fintiv assessment often collapses to Factor 2 — the proximity of trial date to the projected statutory due date of the final written decision.

The board's decisions earlier in the year provide some practical guidance on how Factor 2 is evaluated, based on the relative timing between the projected final written decision and the trial date at the parallel district court or U.S. International Trade Commission litigation, as summarized in the table below:

In some cases, a stipulation broader than Sotera — no invalidity ground in district court based on a combination of system prior art and the IPR references asserted — would cause Fintiv Factor 4 to weigh strongly against discretionary denial, and can lead to referral despite other disfavoring Fintiv factors.[1]

At the same time, Fintiv remains fact dependent and dynamic. Developments in the district court can change the board's initial assessment and reopen the door to institution.

For example, in Advanced Micro Devices Inc. v. XtreamEdge Inc., decided on Aug. 14, acting Director Coke Morgan Stewart granted the petitioner's request for rehearing discretionary denial, vacated a discretionary denial and referred the petition to the board because since the denial decision, the district court litigation was stayed, pending the completion of venue discovery and motion to transfer.

And in Arm Ltd. v. Daedalus Prime LLC, decided Aug. 6, on director review, Stewart vacated the initial discretionary denial decision after the parallel district court litigation that drove the original denial was dismissed with prejudice.

Both petitioners and patent owners should beware of the interplay between the procedural postures at the district court and the PTAB, and track and promptly present any meaningful district court developments — like dismissal, a stay or a transfer — back to the director for reevaluating the original discretionary balance.

Patent Owners' Settled Expectations Should Not Be Disturbed Unless Petitioners Proffer Persuasive Reasons for Review.

Even if an IPR petition does not present Fintiv concerns, it still needs to proactively provide persuasive reasons why the board should spend the resources in light of the settled expectations of the patent owner's enforcement rights in patents that have been in force six or more years.

In Dabico Airport Solutions Inc. v. AXA Power ApS, decided June 18, Stewart stated that "[a]lthough there is no bright-line rule on when expectations become settled, in general, the longer the patent has been in force, the more settled expectations should be," citing Title 35 of the U.S. Code, Section 286:

Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.

Stewart also said that "the Office is disinclined to disturb the settled expectations of Patent Owner" unless the petitioner provided "persuasive reasons why the Office should review the challenged patent."[2]

Stewart noted that "there may be good reasons why a patent owner has strong settled expectations in a patent that has only been in force for three years," such as "an explanation of how an extraordinary amount of investment, time, and resources dedicated to research, development, trials, and regulatory approval correlates to settled expectations."[3]

In one instance, Stewart found that although the challenged patent issued four years ago has not been in force for a significant period of time, the patent owner presented evidence of licensing the challenged patent, creating some settled expectations favoring discretionary denial.[4]

On the other hand, the board recognizes some considerations that weigh against a patent owner's claim of settled expectations.

In Intel Corp. v. Proxense LLC, on June 26, Stewart provided a couple of examples, indicating that "a significant change in law may have occurred since the patent issued, and a petitioner can explain how that change in law directly bears on the patentability of the challenged claims," and that "a patent may have been in force for years but may not have been commercialized, asserted, marked, licensed, or otherwise applied in a petitioner's particular technology space, if at all."

The table below summarizes some considerations that weigh against patent owner's settled expectations.

Under the settled-expectations analysis, patent owners should consider presenting facts showing reliance on enforcement rights, while petitioners must proactively explain why those expectations are weak or outweighed by facts implicating other policy concerns.

Potential Material USPTO Error Favors Institution.

Even when Fintiv and settled expectations weigh in favor of denial, specific fact-based showing of potential USPTO errors can tip the balance in favor of institution.

The table below summarizes scenarios where the director considers instituting IPR as an appropriate use of USPTO resources to correct potential errors.

In Ecto World LLC v. RAI Strategic Holdings Inc., Stewart clarified on May 19 that asserting the same prior art that was previously presented on a voluminous information disclosure statement satisfies the first part of Advanced Bionics, and that under Step 2, a petitioner must show how the examiner materially erred when the asserted prior art was cited in an information disclosure statement but not relied upon by the examiner.

For petitioners, the practical takeaway is to mine prosecution and related litigation histories to identify specific examination errors and highlight them in discretionary briefing.

For patent owners, it may be prudent to, in the discretionary denial request, address discretionarily denial under Section 325(d), reducing the risk of waiving such arguments on director review.

Inefficient Use of the USPTO's Resources Favors Denial.

Stewart's discretionary denial and director review decisions also identify circumstances where instituting review is deemed an inefficient use of USPTO resources.

In these cases, even a facially strong petition may be turned away because the benefit of review is low relative to what has already occurred in other forums or proceedings. The table below summarizes some of these circumstances.

For petitioners, these decisions highlight the need to justify why PTAB review adds something meaningful beyond what other proceedings have already done or will do. For patent owners, they offer a menu of arguments for why review is not warranted.

Insufficient explanation for different claim construction positions between IPR and parallel litigation dooms petition.

Stewart's Sept. 16 memorandum, titled "PTAB Consideration of Prior Findings of Fact and Conclusions of Law," requires the board to explain in the institution decision or final written decision on a finding of fact or conclusion of law that is different than the prior finding or conclusion of the USPTO, district court or the ITC.

Shortly after the memo, on Sept. 20, Stewart issued a general order in then-pending America Invents Act trial proceedings that requires parties to "keep the Board apprised of developments regarding adjudication of validity or patentability of the challenged patent claims, or substantially similar patent claims, such as claim construction, findings of fact, or conclusions of law."

Parties are required to apprise the PTAB of such developments in "any other judicial or administrative matter that would affect, or be affected by, a decision in the proceeding" and that is identified as a related matter under Title 37 of the Code of Federal Regulations, Section 42.8(b)(2).

Against this backdrop, Stewart and Director John Squires issued and designated precedential decisions denying institution where claim construction inconsistencies were not adequately addressed. The table below summarizes some of representative scenarios.

The message from the PTAB is clear: An IPR petition must either harmonize claim construction positions across forums or give a concrete, sufficient explanation for any different positions — or risk being denied all together.

A Petitioner's Prior Knowledge of the Challenged Patent, Absent Early Action, Favors Denial.

A recurring theme in 2025 is that petitioners who knew about the challenged patent but waited to seek IPR review would have an uphill battle.

Stewart repeatedly cited a petitioner's prior knowledge of the challenged patent — and the absence of a timely challenge — as a factor favoring discretionary denial.

This shifts burden to the petitioner to explain why USPTO resources should be expended now, despite earlier opportunities to file.

The practical message is that delay in filing now carries a discretionary penalty. Petitioners should assume that documented prior awareness of a patent — whether through prosecution, negotiations or licensing discussions — will be cited against them unless they can offer a compelling explanation for the timing of their IPR filings.

Internal Memoranda Tighten Procedural Standards for IPR Petitions.

Three 2025 memoranda to the PTAB significantly raised the procedural standards for IPR petitions.

On July 29, Chief Judge Scott Boalick, acting at the direction of Stewart, issued the memorandum "Final Written Decision Procedures for AIA Trial Proceedings."

The memo instructs PTAB panels to address all challenged claims and all grounds raised in an instituted petition in the final written decision.

It emphasizes the approach would promote compact decision making and ensures that panels will not be required to address grounds for the first time in the event of a remand from a director review decision or Federal Circuit appeal.

In practice, it increases the downstream cost of grating institution and provides panels a stronger basis to deny petitions that present redundant or weak grounds as an inefficient use of USPTO resources.

Two days later, on July 31, Stewart issued the memorandum "Enforcement and Non-Waiver of 37 C.F.R. § 42.104(b)(4) and Permissible Uses of General Knowledge in Inter Partes Reviews."

The memo requires the PTAB to strictly enforce Rule 42.104(b)(4), and deny petitions that rely on applicant admitted prior art, expert testimony, common sense and other evidence that is not prior art consisting of patents or printed publications to supply claim elements.

While the memo acknowledges that general knowledge is permissible to support a motivation to combine or to demonstrate the knowledge of a person having ordinary skill in the art, it procedurally requires petitioners to pinpoint where every claim element is found in the cited patents or printed publications.

The memo notes that enforcing Rule 42.104(b)(4) is the best course of action to provide certainty to the parties, the PTAB and the public, and to allow for the efficient administration of the USPTO.

On Oct. 28, Squires issued a memorandum designating as precedential Corning Optical Communications RF LLC v. PPC Broadband Inc., and expressly restoring the USPTO's pre-SharkNinja practice on real-party-in-interest disclosures.

The memo frames RPI requirement under Section 312(a)(2) as not just a procedural safeguard but a national-security imperative, citing evidence that foreign, state-backed actors and parties on the U.S. Department of Commerce entity list have used opaque structures to fund or direct PTAB challenges in sensitive technology sectors.

Going forward, properly raised real-party-in-interest disputes must be resolved at or before institution, and petitioners should expect closer scrutiny of real-party-in-interest disclosures.

Conclusion

So far, no mandamus petition challenging the USPTO's discretionary denials has moved forward at the Federal Circuit on grounds such as settled expectations, alleged road mapping, retroactive application of the reset Fintiv/Sotera framework, or denials following district court Section 101 invalidity findings

The mandamus orders to date signal that petitioners should preserve Administrative Procedure Act and constitutional challenges at the agency level first if they hope to seek meaningful judicial review later.

They also call practitioners' attention toward the pending Apple v. Vidal remand — now Apple Inc. v. Squires, where the U.S. District Court for the Northern District of California characterized Fintiv as a"general statement of policy, not requiring notice-and-comment rulemaking under the APA.

Oral argument in that appeal was held on Jan. 5, and the Federal Circuit's decision is likely to shape the next wave of challenges to the current IPR institution regime.

In October 2025, the USPTO released a new notice of proposed rulemaking, titled "Revision to Rules of Practice before the Patent Trial and Appeal Board," aimed at further tightening the institution framework, particularly where validity has already been, or soon will be, adjudicated elsewhere, and by limiting institution to petitioners who stipulate to waive prior art based invalidity challenges under Sections 102 and 103.

The notice of proposed rulemaking has drawn over 11,000 public comments, for and against the proposed new rules. Whether, and in what form, these rules will ultimately be adopted remains to be seen in 2026.

Endnotes

[1] Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00217, -00219 to -00222, -00339, Paper 9 (Director Jun. 13, 2025).

[2] Dabico, IPR2025-00408, Paper 21 at 3.

[3] Amgen Inc. v. Bristol-Myers Squibb Co., IPR2025-00601, -00602, -00603, Paper 9 (Director July 24, 2025) (informative).

[4] Alliance Laundry Sys., LLC v. PayRange LLC, IPR2025-00950, Paper 11 (Director September 19, 2025) (informative).