While inter partes review (“IPR”) remains a powerful tool for validity challenges, petitioners today face a more demanding procedural environment: increased scrutiny of discretionary denials, expectations for more transparent prior art searches and real party-in-interest disclosure, and evolving Director Review trends. Below is a summary of the key changes to help petitioners evaluate the strategic considerations before filing an IPR petition in this new era.

I.    Discretionary Denial

On March 24, 2025, Chief Administrative Patent Judge Scott R. Boalick issued “Guidance on USPTO’s recission of ‘Interim Procedure for Discretionary Denial in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Boalick Memo”), signaling a return to a stricter discretionary denial environment concerning parallel litigation. Two days later, then-Acting Director Coke M. Stewart issued a memorandum titled “Interim Processes for PTAB Workload Management” (“Steward Memo I”), which also brought in key procedural and substantive changes.

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Under this new framework, the institution decision process is bifurcated: first, a discretionary denial phase where the Director, in consultation with at least three PTAB judges, considers non-merit factors including parallel litigation. If not denied, then a three-member panel handles institution on merits/statutory grounds. In the discretionary denial phase, patent owners may file a “Discretionary Denial Brief” within two months of the notice of filing date, petitioners may file an Opposition one month later, word limits (14,000 for briefs, 5,600 for reply) apply.

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The two memos also expand the scope of discretionary denials. First, the Boalick Memo reinstates and clarifies the existing Fintiv[1] factors:

• whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted;

  • Under the Boalick Memo, the Board will apply Fintiv factors when there is a parallel proceeding at the International Trade Commission (“ITC”), which almost never stays its cases.

• proximity of the court's trial date to the Board's projected statutory deadline for a final written decision;•    

  • Under the Boalick Memo, the Board may consider median time-to-trial statistics for district court/ITC, not just the concrete scheduled trial date.

• investment in the parallel proceeding by the court and the parties;

• overlap between issues raised in the petition and in the parallel proceeding;

  • Under the Boalick Memo, a Sotera stipulation (i.e., a stipulation from a petitioner that, if an IPR is instituted, the petitioner will not pursue in district court (or in the ITC) any ground raised or that could have been reasonably raised in the IPR) may be “highly relevant” to avoid discretionary denial, but it is not dispositive alone.

• whether the petitioner and the defendant in the parallel proceeding are the same party;•    

• other circumstances that impact the Board's exercise of discretion, including the merits.

  • Under the Boalick Memo, compelling merits alone are not dispositive for institution.

Then, the Steward Memo I expressly introduces new factors for discretionary denial:

• whether the PTAB or another forum has already adjudicated the validity or patentability of the challenged patent claims;

• whether there have been changes in the law or new judicial precedent issued since issuance of the claims that may affect patentability;

• the strength of the patentability challenge;

• the extent of the petition’s reliance on expert testimony;

• settled expectations of the parties, such as the length of time the claims have been in force;

• compelling economic, public health, or national security interests.
   

II.    Settled Expectation

Among the additional discretionary-denial factors, “settled expectation” has been widely applied in Director Review decisions. iRhythm[2] is the first PTAB decision that formally applied the “settled expectations” factor, holding that petitioner’s awareness of the then-pending application – proved by an Information Disclosure Statement filed in its own patent application – and failure to seek early review of the 11-year-old patents establishes settled expectations outweighing other considerations. Dabico[3] goes further, where the Acting Director invoked settled expectations sua sponte and articulated a six-year benchmark for settled expectations. Finally, Intel v. Proxense[4], while denied institution, set forth factors a petitioner could have shown to overcome settled expectations:
•    significant change in law has occurred since the challenged patent was issued that directly bears on the patentability of the challenged claims;
•    challenged patent has not been commercialized, asserted, marked, licensed, or otherwise applied in a petitioner’s particular technology space.

Another factor for overcoming settled expectations is that “the Office erred in a manner material to the patentability of the challenged claims.” See e.g., Apple Inc. v. Advanced Coding Technologies LLC, IPR2025-01103 (October 17, 2025).

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While petitioners theoretically may overcome settled expectations, the PTAB’s early case law demonstrates that patent age, petitioner awareness, and delay remain exceptionally difficult to dislodge absent a clearly demonstrable and significant change in circumstances. See e.g., Google LLC v. SoundClear Tech. LLC, IPR2025-00345 (August 4, 2025) (holding that lack of commercialization, without more, does not defeat patent owner’s strong settled expectations).

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III.    Director Institution

On October 17, 2025, Director John A. Squitieri issued a memorandum titled “Director Institution of AIA Trial Proceedings” (“Squitieri Memo I”). The Squitieri Memo I, while preserving the bifurcated briefing framework, announced that all IPR institution decisions will now be made directly by the Director, regardless of discretionary considerations, merits, or non-discretionary considerations. Under this new system, most institution decisions will be issued as short, streamlined “summary notices,” while only cases involving novel or important factual or legal issues will receive more detailed institution decisions. The Director may refer the decision on institution to one or more members of the PTAB where the Director determines that detailed treatment of issues raised in a petition is appropriate. After institution, the proceeding transfers back to a traditional three-judge PTAB panel, which handles the trial phase and final written decision. 

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Here are some key considerations for companies considering an IPR:
•    Timing is critical. Timing and coordination among global strategy becomes even more important – delays in filing the IPR petition can signal to PTAB that the status quo is stable, increasing denial risk. Because settled-expectations concerns grow with patent age, companies should identify and track patents of interest early – even before litigation – to preserve the option to file a timely IPR. Sophisticated petitioners should assume higher expectations for awareness, timing, diligence, and internal consistency.
•    Preparation for discretionary-denial briefing. Strong merits can no longer override discretionary denial concerns. Petitioners should affirmatively address discretionary-denial factors—including settled expectations—inside the petition itself whenever any risk indicators are present. In addition, petitioners should expect the patent owners to file a “discretionary denial” brief, and proactively prepare the opposition.
•    Expect less detailed institution decisions. With the Director now issuing short “summary notices” for most institution decisions, petitioners should not rely on granular pre-institution reasoning and should focus on building a clean, self-contained petition record. Because institution decisions are now centralized in the Director’s office, petitioners should expect greater consistency across cases.
•    Consider alternatives or dual-track strategy. Given the stricter environment for IPR proceedings, Post-Grant Review (PGR) and Ex Parte Reexamination (EPR) are now more strategically relevant than before. If the patent is within its first 9 months, a PGR allows §101, §112, written description, and indefiniteness challenges. If the patent is old, a less expensive and less procedurally rigid EPR can be filed anonymously or by someone other than the litigation defendant. For high-value matters, companies can consider filing an EPR first and later an IPR. If the IPR faces a discretionary denial, the EPR continues regardless.

 

[1] Apple Inc. v. Fintiv, Inc., IPR2020-00019 (Mar. 20, 2020).

[2] iRhythm Techs., Inc. v. Welch Allyn, Inc., IPR2025-00363, Paper 10 (June 6, 2025).

[3] Dabico Airpot Sols Inc. v. AXA Power APS, IPR2025-00408, Paper 21 (June 18, 2025)

[4] Intel Corp. v. Proxense LLC, IPR2025-00327, Paper 12 (June 26, 2025)