The Fall Brings Significant Changes to PTAB Practice

Six years ago, in Arthrex v. Smith & Nephew, the Federal Circuit held that Patent Trial and Appeal Board (PTAB) judges were principal officers.[1] That ruling garnered significant attention from patent practitioners leading up to the Supreme Court’s decision in Arthrex that established Director Review.[2]

This fall there are even more significant change to PTAB practice. If these changes are upheld by the courts, they would make institution of inter partes review (IPR) more difficult and a less advantageous way to challenge patents. In response, patent challengers may turn instead to turn to reexamination and possibly post-grant review (PGR).

Below is a discussion of some of these new changes: Director Squires’ new format for institution decisions, the Office’s notice of proposed rulemaking relating to PTAB practice, and the Office’s memo regarding PTAB consideration of prior findings of fact and conclusions of law.

The Director’s New Procedure for Institution Decisions

On October 31, 2025, the Director issued a Notice of Decisions on Institution that denied institution of IPR in 13 IPR proceedings.[3] The Notice is a single page without any substantive reasoning why institution in any of these 13 proceedings was denied institution. The Notice stands in contrast to past institution decisions by a panel of PTAB judges: these prior decisions spanned many pages providing reasons why an IPR or PGR was instituted or denied institution.

The October 31st Notice is consistent with the Director’s October 17, 2025 letter titled “Bringing the USPTO Back to the Future: Return of Institution Authority under 35 U.S.C. §§ 314 and 324 to the Director”[4] and the Director’s October 17, 2025 memo regarding Director Institution of AIA Trial Proceedings.[5] In the October 17 letter, the Director explained that he would handle all institution decisions moving forward that that this change would “[e]liminate the appearance of self-interest,” “[r]emove a perceived referral-signal bias,” “[e]nhance transparency and public trust,” and “[r]e-align the duties and responsibility of the Director.”

The October 17 memo provides further detail on the new procedures for institution. The memo explains that all routine decisions on institution will be “limited to summary notices,” but the Director may issue a decision on institution involving “novel or important factual or legal issues” or may refer the decision on institution to one or more PTAB members for “detailed treatment of issues raised in a petition.”

The Director’s new procedure for institution is likely to be challenged in the courts. Some have argued that current regulations require delegation of institution decisions to the PTAB, so the Director would need to promulgate new regulations subject to notice-and-comment rulemaking to undo the delegation. But in the October 17 letter, the Director noted 35 U.S.C. § 314(a) “vests the authority to institute IPRs and PGRs in the USPTO Director” and although Title 35 “permits delegation,” “such delegation is non-exclusive.”

Disappointed petitioners have already filed petitions for mandamus to the Federal Circuit related to Acting Director Coke Morgan Stewart’s interim procedures for institution and some of those petitions have been pending since June 2025.

In resolving challenges to the Director’s new procedure for institution, courts will likely interpret the institution statute, 35 U.S.C § 314. Section 314(a) states “The Director may not authorize an inter partes review to be instituted unless the Director determines the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition,” and § 314(d) states “The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”

It will be interesting to see how much weight courts give the word “may” in § 314(a) and nonappealability in § 314(d). The Supreme Court has already stated that institution decisions are not entirely unreviewable: in Cuozzo Speed Technologies v. Lee, the Court stated that “shenanigans” during the institution may be reviewable under the Administrative Procedure Act.[6]

The Office’s Proposed Rulemaking Relating to PTAB Practice

On October 17, 2025, the Office issued proposed rulemaking “to focus [IPR] proceedings on patent claims that have not previously been challenged in litigation or where prior litigation was resolved at an early stage.”[7] The Office stated that “[a]pproximately 54% of all IPR petitions filed since the passage of the AIA are one of multiple petitions against the same patent,” and that “since 2019, the percentage of petitions that are one of multiple challenges to the same patent . . . remains above 45%.” Comments on the proposed rules are due November 17, 2025.

The October 17 proposed rulemaking includes a variety of proposed changes to 37 C.F.R. § 42.108, including:

• • The petitioner must file a stipulation that if the IPR proceeding is instituted, the petitioner will not raise any grounds under 35 U.S.C. §§ 102 and 103 in any other proceeding;
• • IPR shall not be instituted or maintained if a challenged claim or independent claim from which the challenged claim depends was “found valid” in a prior proceeding, such as district court, International Trade Commission (ITC), PTAB, and the Federal Circuit; and
• • IPR shall not be instituted or maintained if parallel litigation concludes before the due date for the PTAB’s final written decision. Conclusion of the parallel litigation includes a district court trial, an initial or a final determination from the ITC, and a final written decision from the PTAB.

The proposed rule has an exception for “extraordinary circumstances,” including situations where the prior challenge was in bad faith and the prior challenge is rendered irrelevant in view of a substantial change in a statute or Supreme Court precedent.

Further, the proposed rule states that “[f]rivolous or abusive petitions . . . may be appropriately sanctioned, including with an award of attorneys’ fees.”

The Office’s proposed rulemaking is likely to receive a larger number of public comments. For comparison, the Office reported that its 2024 proposed rulemaking regarding PTAB practice received 3,900 submissions of which 110 comments were unique.

The Office’s Memo Regarding PTAB Consideration

Preclusion and estoppel between district courts, the ITC, and PTAB proceedings has been heavily litigated. In general, a panel of PTAB judges in a post-grant challenge of a patent is not automatically required to follow past findings or rulings in a prior adjudication related to that patent. And in general, there has not been uniformity in how PTAB judges address past findings and rulings in their decisions.

On September 16, 2025, Acting Director Stewart issued a memo regarding how the PTAB will consider prior findings of fact and conclusions of law going forward.[8] In the memo, Acting Director Stewart explained that for patent claims or substantially similar patent claims that have already been adjudicated before the Office, in district court, or at the ITC, the PTAB judges will need to explain why they are not filing prior findings of fact and conclusions of law: “if the Board reaches an initial or final decision on a finding of fact or conclusion of law that is different than the prior finding or conclusion of the Office, the district court, or the ITC, the Board shall explain in the institution or final written decision why a different outcome is warranted,” and “[a] more detailed explanation is required from the Board when the same or substantially same evidence and/or arguments that were previously presented to the Office, the district court, or the ITC are being relied upon in the subsequent AIA trial proceeding.”

The Office’s September 16 memo may lead to the PTAB judges deferring more to prior findings of fact and conclusions of law.

Patent Stakeholders and the PTAB

Overall, these changes point to a PTAB that is more restrictive in the disputes it will consider, forcing patent stakeholders to be more selective and strategic in the matters they bring before the PTAB. In some cases, they will be better off pursuing other avenues, such as reexamination, post-grant review, or invalidity claims in district court.

[1] Athrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (2019).

[2] United States v. Arthrex, 594 U.S. 1 (2021).

[3] Notice of Decisions on Institution, Paper 9 (PTAB Oct. 31, 2025)

[4] https://www.uspto.gov/sites/default/files/documents/open-letter-and-memo_20251017.pdf

[5] https://www.uspto.gov/sites/default/files/documents/Director_Institution_of_AIA_Trial_Proceedings.pdf

[6] Cuozzo Speed Techs., LLC v. Lee, 579 US 261 (2016).

[7] https://www.govinfo.gov/content/pkg/FR-2025-10-17/pdf/2025-19580.pdf

[8] https://www.uspto.gov/subscription-center/2025/uspto-issues-memorandum-regarding-ptab-consideration-prior-adjudications