Imagine That IP Law Blog

The United States Patent and Trademark Office (USPTO), led by Director John A. Squires, has issued a notice of proposed rulemaking to revise the rules governing inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB). The proposed amendment would expand 37 C.F.R. § 42.108 by adding new subsections (d) through (g) to clarify when the Office may decline to institute an IPR, even when a petition otherwise meets statutory thresholds.

The proposed changes would narrow those IPR proceedings that are instituted. The Director aims to prevent IPRs from duplicating litigation efforts, reduce redundant challenges, and strengthen confidence in issued patents.

The America Invents Act (AIA) created IPRs in 2011 to serve as a “quick and cost-effective alternative” to district court litigation. In practice, however, IPRs have often become additions to ongoing litigation. Petitioners regularly pursue IPRs while simultaneously challenging patent validity in district court or before the U.S. International Trade Commission (ITC).

The USPTO reports that more than half of IPR petitions are one of multiple petitions against the same patent, and over 80% coincide with ongoing litigation. This pattern potentially overburdens both the PTAB and the courts. The new rule aims to significantly reduce the number of repetitive or duplicative IPRs.

Despite prior efforts—such as precedential PTAB decisions (e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)) discouraging serial and parallel petitions—repetitive challenges remain common. At times, patent owners are forced to defend duplicative issues in multiple forums. In other cases, the PTAB has provided a forum where a Petitioner is permitted to assert a claim construction position that is inconsistent with that advanced by the Petitioner in parallel district court litigation. The strategies can delay final outcomes, raise costs, and disincentivize investment in new technologies, particularly among smaller entities that rely on strong patent rights to compete with larger incumbents.

The proposed changes are intended to discourage multiple or overlapping validity challenges, which can result in reduced litigation costs and more consistent PTAB decisions. According Director Squires, concentrating IPR proceedings on claims that have not yet been tested in other venues would allow administrative patent judges to focus on substantive, first-instance review rather than duplicative re-litigation.

Proposed Changes to § 42.108(d)–(g)

The new subsections would expressly define when the PTAB must decline to institute an IPR.

(d) Required Stipulation for Efficiency

Petitioners would be required to file a stipulation stating that, if an IPR is instituted, they and their privies will not raise invalidity challenges under §§ 102 or 103 in any other venue, such as district court or the ITC. The stipulation must also be filed in those other forums.

(e) Claims Found Valid in Prior Proceedings

Institution would be barred where the challenged claim, or an independent claim it depends on, has already been upheld as valid or patentable in another proceeding. Applicable examples include where the claim was found valid by a court, confirmed valid by the ITC or the PTAB in a prior review, or reaffirmed through ex parte reexamination. It also extends to cases where the Federal Circuit reversed a prior invalidity finding.

(f) Parallel Litigation

The PTAB would decline to institute an IPR when a parallel proceeding is likely to reach a validity determination first, such as an upcoming district court trial, ITC decision, or another PTAB final written decision addressing the same claims.

(g) Institution in Extraordinary Circumstances

The Director may personally authorize institution despite (d)–(f) in extraordinary circumstances, such as when a prior proceeding was initiated in bad faith to prevent future review or when a substantial change in law makes prior rulings obsolete. However, ordinary developments like new prior art, new expert testimony, or new arguments would not qualify as extraordinary. Frivolous petitions under this exception could be sanctioned, including with attorney-fee awards.

Impact
The proposed change could significantly constrain petitioners’ flexibility to pursue invalidity both before the PTAB and in litigation. Under subsection (d), a petitioner would no longer be able to pursue both district court litigation and an IPR based on overlapping invalidity grounds. Choosing PTAB review would mean forfeiting parallel invalidity arguments in court or at the ITC.

The combined effect of subsections (d) through (f) would make it far more difficult to bring repetitive or follow-on IPRs, particularly against patents that have already been tested and upheld. Petitioners would lose the ability to file multiple or redundant challenges as a matter of strategy, and the Director’s limited discretion under (g) offers little room for exception.  As currently proposed, an unsuccessful challenge of a patent by a first petitioner could entirely preclude a challenge of the same patent by a second, unrelated petitioner.

For frequent IPR filers, such as large technology companies, this marks a major procedural shift. The proposed rule changes would necessitate more front-loaded strategic analysis and may preclude IPR filings in cases where litigation is already well advanced.

Patent owners could see a substantial strengthening of their patents. Once a claim has survived a court, ITC, or PTAB validity challenge, it would be more difficult to be the subject of a subsequent IPR attack. Patent holders would also benefit from fewer duplicative proceedings, reduced legal expenses, and earlier resolution of disputes. This could be particularly beneficial to smaller entities and startups that depend on stable patent rights to attract investment and compete in technology markets.

While the USPTO states the proposal’s goal is to restore balance and efficiency to the IPR system, some observers may view the changes as going too far in restricting access to review, especially for new challengers with different evidence or prior art. Whether these restrictions strike the right equilibrium between fairness to patent owners and access to administrative review remains to be seen. Public comments on the proposal close November 17, 2025, and the final rule will reveal how the USPTO weighs those competing perspectives and how far it ultimately goes in reshaping inter partes review practice.