The USPTO is Poised to Reject More IPR Petitions
In February and March 2025, the USPTO changed how the Patent Trial and Appeal Board (“PTAB” or “Board”) may exercise its discretion to deny institution of an Inter Partes Review (“IPR”), particularly when there is a parallel district court case or International Trade Commission (“ITC”) investigation.1 According to the USPTO, the changes were made to help the PTAB manage its workflow.
Now, the impacts of those changes are being felt. The PTAB has shown a willingness to exercise its discretion to deny institution even where the petitioner showed a likelihood of success on the merits or submitted a Soterastyle stipulation (i.e., a stipulation that the petitioner will not pursue any ground it raised or reasonably could have raised in the IPR in the parallel proceeding). A rise in denials of IPR petitions at the institution phase seems likely.
In this alert, we provide an overview of (i) the recent history of the PTAB’s use of its discretion to deny institution of IPRs; (ii) the PTAB’s updated procedures regarding discretionary denials; and (iii) recent decisions denying institution in the wake of the updated procedures.