In a flurry of activity, the USPTO Director John Squires has updated the procedures for instituting America Invents Act (AIA) trials (including inter partes reviews (IPRs) and post-grant reviews (PGRs)) and designated two Patent Trial and Appeal Board (PTAB) decisions as precedential, further influencing AIA trials. The actions taken by Director Squires included returning institution authority for AIA trials to the Director and establishing new rules for parties regarding disclosures and consistency in litigation positions.
Director Assumes Institutional Authority and Redefines AIA Trial Institution
According to a memorandum issued October 17, 2025, the Director will, effective as of October 20, 2025, personally determine whether to institute trial for all IPR and PGR petitions – revoking the previous delegation of the task to the PTAB. Institution decisions will be made by the Director after reviewing discretionary considerations, the merits, and non-discretionary considerations, in consultation with at least three PTAB judges. Routine decisions granting or denying institution will be limited to summary notices, whereas decisions addressing novel or important factual or legal issues may be issued as detailed decisions. The Director may also refer decisions involving detailed treatment (e.g., complex claim construction issues, priority analysis, or real party in interest determination) to one or more members of the PTAB. Early decisions by the Director include summarily denying without explanation 13 IPR petitions in a single notice.
In an open letter issued with the memorandum on October 17, 2025, Director Squires explained that he was reclaiming the institutional authority for AIA proceedings under 35 U.S.C. §§ 314 and 324 to align the Office “procedures with the clear language and intent of the [AIA] statute and [return] accountability for such decisions to the Director just as the framework of the AIA provides.” The Director justified reclaiming institution decision making to eliminate the appearance of self-interest by separating the power to institute from the body that conducts the trial, to remove any perceived referral-signal bias by centralizing the decision point, to enhance transparency and public trust, and to realign accountability for the threshold determination to the Director.
A notice of decisions issued on November 20, 2025, illustrates examples of the Director’s new authority. In this single notice, the Director denied institution for 56 AIA trial proceedings, including IPRs and post-grant reviews (PGRs), based on discretionary considerations pursuant to §§ 314 and 324. Furthermore, the notice confirmed that 31 AIA trial proceedings (3 PGRs and 28 IPRs) survived the discretionary review phase and will proceed to review for merits and non-discretionary considerations. The Director also denied institution for one IPR after a review of the merits, finding that the petitioner failed to show a reasonable likelihood of prevailing with respect to at least one challenged claim.
Precedential Decisions Define Requirements for Petitioners
Director Squires also designated as precedential decisions in Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00440 (“Corning”) and Revvo Technologies, Inc. v. Cerebrum Sensor Technologies, Inc., IPR2025-00632 (“Revvo”) to establish requirements for parties concerning the accuracy of their petitions and the consistency of their legal positions across forums.
In Corning, the Board terminated the proceedings because the petitioner failed to identify all real parties of interest (RPIs). Specifically, petitioner Corning Optical Communications RF, LLC failed to identify two other Corning entities – Corning Incorporated and Corning NC. Under 35 U.S.C. § 312(a)(2), a petition may be considered “only if” it identifies “all” the real parties in interest (RPIs). Because the petitioner failed to meet the statutory requirement, and any corrected petition would have received a new filing date that was time-barred under 35 U.S.C. § 315(b), the Board dismissed the petitions and vacated the Decisions on Institution.
In Revvo, the Director, Director Squires vacated a Board decision granting institution because the petitioner adopted claim constructions at the PTAB that were inconsistent with positions taken in parallel district court litigation without providing a sufficient explanation. The Director Review decision explained that when a petitioner takes alternative claim construction positions, they should, at a minimum, explain why those alternative positions are warranted. The ruling clarified that the requirement to justify differing positions applies to all claim construction issues and is not limited to instances involving means-plus-function interpretation under 35 U.S.C. § 112(f). The ruling further explained that contending that a term cannot be challenged under 112(b) in an IPR is not a sufficient explanation to have different constructions in an IPR and parallel litigation.
The Director assuming control of institution decisions for AIA trials and the new precedential rulings introduce new factors that require careful consideration for potential petitioners. Parties contemplating an IPR or PGR will now be required to abide by a higher standard of procedural compliance which impacts the risk assessment when evaluating whether to challenge a patent at the PTAB or consider alternatives, such as litigation in district court or petitioning for ex parte reexaminations (EPRs).
Author: James Vezeris
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