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.

IV.    General Knowledge

On July 31, 2025, a memorandum issued by then-Acting Director Coke M. Stewart, “Enforcement and Non-waiver of 37 C.F.R. § 42.104(b)(4) and Permissible Uses of General Knowledge in Inter Partes Review” (“Steward Memo II”), tightens PTAB requirements for IPR petitions by restricting the use of general knowledge to satisfy missing claim elements.

The Steward Memo II directs PTAB panels to deny an IPR that uses “AAPA, expert testimony, common sense, and other evidence that is not ‘prior art consisting of patents or printed publications’ (collectively, ‘general knowledge’)” to supply a missing claim limitation. The narrow role preserved for general knowledge is to support:

• a motivation to combine, or

• the knowledge of a person having ordinary skill in the art.

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V.    Real Party in Interest (“RPI”)

The October 28, 2025 memorandum from Director John A. Squitieri (“Squitieri Memo II”) reinstates strict compliance with the statutory requirement that every IPR petition must identify all RPI before institution. By designating Corning Optical [1] as precedential and overruling SharkNinja[2], the Squitieri Memo II confirmed that § 312(a)(2) is a mandatory gateway requirement that must be satisfied before the Director can institute a trial. The Squitieri Memo II emphasizes that RPI transparency is now viewed as a national-security priority, expressing concerns that foreign state-backed actors have used opaque investment structures to gain access to PTAB challenges. As a result, petitioners must now identify all RPI in the petition; otherwise, under Corning Optical, the petition may be deemed incomplete through post-institution discovery on RPI and correcting the RPI requires the petitioner to file a new petition that may be time-barred under § 315(b).

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VI.    Claim Construction

The recent Director Review decisions issued by Director John A. Squitieri – Revvo[3] and Tesla[4] – establish a clear doctrine requiring petitioners to maintain consistent claim construction positions before the PTAB and district court. In Revvo (designated precedential on November 3, 2025), the Director vacated institution after sua sponte Director Review, holding that “the petitioner should explain sufficiently why the different positions are warranted, even in instances that do not implicate Section 112(f),” and “accepts Patent Owner’s proposed constructions” from the district court litigation does not suffice. This principle was immediately reinforced in Tesla, where the Director again vacated institution, holding that merely noting that indefiniteness challenges cannot be raised in an IPR is not a sufficient explanation for inconsistent positions. 

The Director also provided guidance on what constitutes a sufficient explanation for different positions. For example, if a party advanced a narrow construction in district court and the court declined to adopt it; or, notwithstanding the alleged indefiniteness, an ordinary skilled artisan would understand that the asserted art satisfies the disputed limitation.

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VII.    Search Disclosure Declaration (“SDD”)

Director John A. Squitieri’s November 17, 2025 memorandum, titled “Voluntary Search Disclosure Declarations as a Favorable Factor in Institution Decisions” (“Squitieri Memo III”), introduced SDD as yet another discretionary-denial factor. An SDD includes a short explanation of the databases, repositories, search fields, filters, or general query approaches used to locate the asserted art that may be submitted as a standalone exhibit and designated as business confidential information. Submission of an SDD is voluntary and will be considered as a non-exclusive, non-dispositive, favorable discretionary factor supporting institution, for example, it may help demonstrate Office error during examination. 

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Here are some key considerations for companies considering an IPR:
•    Conduct an early and full RPI audit. Before filing, companies should conduct a careful RPI audit to identify any parent entities, affiliates, or indemnitors that fund, direct, and/or benefit from the IPR, especially in complex corporate structures. Early identification and disclosure of corporate structure and indemnity agreements are encouraged to ensure compliance and avoid time-bar risk.
•    Structured prior art searches. Petitioners are encouraged to conduct structured, defensible prior art searches and document search strings, date ranges, classifications, and metadata showing how each reference was located. Submission of an SDD is favored when possible.
•    Focus patent or printed publication. Avoid any reliance on “general knowledge,” common sense, inherency, or expert assertions to fill missing claim elements. Any gap in the mapping must be supported by a patent or printed publication, or the petition faces mandatory denial. Keep expert evidence targeted and tied closely to the patent or printed publication.
•    Align claim construction strategies. If parallel litigation exists, petitioners must strategically coordinate and align their claim construction positions before PTAB and district courts and proactively justify any differences to avoid denial at the institution stage.

 

[1] Corning Optical Communications RF, LLC v. PPC Broadband Inc., IPR2014-00440 (Aug. 18, 2015)

[2] SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734 (Oct. 6, 2020)

[3] Revvo Technologies, Inc. v. Cerebrum Sensor Technologies, Inc., IPR2025-00632 (November 3, 2025)

[4] Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00340 (November 5, 2025)