The USPTO has launched a sweeping recalibration of its post-grant proceedings at the PTAB, signaling a decisive pivot back toward discretionary denials of patent challenges. With the rescission of prior procedural guidance, a heightened risk of Fintiv-based denials, the rollout of a new bifurcation process for institution review, and looming staff reductions, Acting Director Coke Morgan Stewart is steering the PTAB away from late-stage patent attacks and toward a system that favors earlier challenges. The takeaway is clear: patent challengers must move faster and more strategically—because the USPTO isn’t just shifting gears, it’s shifting its underlying philosophy.
The US Patent and Trademark Office (USPTO) has begun 2025 with a series of consequential developments that are reshaping how patent challenges are evaluated at the Patent Trial and Appeal Board (PTAB). New memos, procedural overhauls, and case-level interventions demonstrate a marked shift in policy direction—one that emphasizes earlier engagement, centralized discretion, and tighter alignment with district court proceedings. These changes reflect not only evolving legal priorities but also broader political and organizational currents reshaping the agency from within.
In late February 2025, the USPTO rescinded its 2022 memo that had curtailed the PTAB’s ability to deny institution of review in light of parallel litigation. That prior guidance had paved the way for a more petitioner-friendly era by softening the application of the Fintiv factors. Its reversal denotes a renewed emphasis on institutional discretion and a return to a more cautious, context-driven approach to potential redundancy and litigation overlap.
Under the Fintiv framework, the PTAB will continue to weigh the timing of related district court or International Trade Commission trials along with whether the petitioner has stipulated not to pursue duplicative arguments in parallel litigation. But where such stipulations once provided a safe harbor from discretionary denial, they now serve only as one part of a broader, more holistic assessment. Even a strong merits case no longer guarantees institution if procedural factors weigh against it.
One of the most far-reaching changes arrived on March 26, when Acting Director Stewart introduced a bifurcated process for institution decisions. Under this system, discretionary denials will be reviewed separately—and first—by the Director and a panel of judges before any evaluation of the merits occurs.
The following graphic illustrates the structure and timing of the new bifurcated review process:
This change within the institution process could not only standardize how discretion is exercised across cases but also centralize it, elevating policy priorities such as judicial efficiency and “settled expectations” over purely technical merits. Parties are now permitted to file dedicated briefs on discretionary factors, introducing new opportunities—and risks—for advocacy centered on timing, investment in litigation, national interest, and forum integrity.
In practice, this means that strategic briefing, including arguments about the overuse of expert testimony or public policy interests, could now tip the scales—even in cases with compelling invalidity arguments based on prior art.
The USPTO’s new posture is not just theoretical. Just days after the bifurcation memo, the Acting Director used her new authority to vacate four PTAB institution decisions involving Motorola’s challenges to patents owned by Stellar Inc. [1] The PTAB had instituted review, but Stewart found the Board gave too little weight to the substantial investment in parallel district court proceedings and too much weight to Motorola’s Sotera stipulation. [2]
This hands-on intervention underscored a key point: discretionary denial is no longer a background risk—it’s front and center, and it’s being enforced at the top.
The procedural revamp comes alongside internal upheaval at the PTAB. In March 2025, Chief Judge Scott Boalick warned judges to prepare for layoffs following the expiration of voluntary retirement and separation programs on April 17, 2025. Judges were urged to update their personnel files, as seniority will determine retention in any reduction in force.
This staffing shakeup, part of a broader federal push to reduce headcount and costs, could significantly shrink the PTAB’s judge pool—just as they are being tasked with implementing the USPTO’s new discretionary review process. The resulting tension between workload demands and available personnel may shape how quickly and consistently these new policies take hold.
Underlying the Acting Director’s speeches and memos is a deeper policy goal: encourage early, prelitigation patent scrutiny. At a recent conference, the Acting Director lamented the underuse of the early-stage mechanisms created by the America Invents Act like third-party preissuance submissions and post-grant reviews. Instead, most challenges still arise only after infringement litigation has begun, clogging the PTAB and generating late-stage contention.
The clear message to stakeholders is that the PTAB will now reward those who engage early. Filing inter partes reviews sooner, before significant litigation investment, minimizes the risk of discretionary denial. Challengers that wait may find their petitions dismissed, no matter how strong the underlying arguments.
From increased discretionary denials to director-led oversight and judge layoffs, the USPTO is undergoing a transformation not just in form but in philosophy. The agency is tightening the spigot on late-stage patent challenges while seeking to reinforce the value of patent rights through earlier scrutiny and broader policy alignment. These developments unfold as the nomination of John Squires for USPTO Director has been referred to the Senate Judiciary Committee, signaling potential leadership changes in the coming months.
For patent challengers, this marks a significant change in how and when to contest patent validity, especially at the PTAB where the burden of proof is lower. Delays or misalignment with parallel litigation could derail even the most promising petitions. For patent owners, it is a moment of opportunity: the playing field is tilting in favor of earlier certainty, stronger procedural defenses, and potentially more durable rights. For all stakeholders, careful attention to this developing framework is essential to understand how things will shake out—and to adapt as new decisions shape its contours in the weeks and months ahead.
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