New PTO rules curtail inter partes review, alter patent litigation balance

Barring a successful court challenge, patent attorneys will have to adjust to a new landscape that in many ways predates the 2011 passage of the America Invents Act, which created a system that allowed petitioners to challenge the validity of patents years after they were approved.

The new director of the U.S. Patent and Trademark Office, John A. Squires, took personal control in October over decisions on whether inter partes review proceedings can be instituted by the Patent Trial and Appeal Board (PTAB) under a process known as inter partes review.

The decision by Squires, appointed by President Donald Trump, followed one earlier in March by then-acting patent office director Coke Morgan Stewart.

Under the new rules, Squires or his designee - Stewart - must decide whether the PTAB should review the validity of a patent in the first place instead of leaving that decision up to the board's administrative law judges.

Thus far, the new, centralized review policy has represented a dramatic shift.

Under the former patent office director, Kathi Vidal, an appointee of President Joe Biden who now works at Winston & Strawn LLP, roughly two-thirds of inter partes review petitions (IPRs) were granted, according to Dennis D. Crouch, a professor at the University of Missouri School of Law and the creator of the Patently-O blog.

Through Dec. 1 this year, just 4% of all petitions have been granted, though some remain pending, according to a running tally on his blog.

Crouch, in an email, said that since the passage of the America Invents Act in 2011, "tens of thousands of patent claims have been cancelled as obvious through IPRs - something that represents a historic anomaly in patent law."

"We're now watching that entire infrastructure get systematically dismantled," he added.

Several companies, from Motorola Solutions Inc. to Sandisk Technologies Inc., have filed petitions seeking mandamus relief with the U.S. Court of Appeals for the Federal Circuit, arguing that the new rules violate the Administrative Procedure Act and the due process clause of the Fifth Amendment.

But in November and December, different Federal Circuit panels denied the petitions as "not reviewable," ruling against a challenge by Motorola led by Jones Day partner Matthew J. Silveira of San Francisco. In re: Motorola Solutions, 25-134 (Fed Circ., filed June 23, 2025).

Four more challenges were rejected in December, in which a different Federal Circuit panel denied writs of mandamus challenging patent office decisions against instituting inter partes review because the patents in question had been in force for at least nine years, "creating strong settled expectations" for the patent owners.

There are more writ petitions pending, but if they fail and the Trump administration appointees continue to take a dim view of inter partes review, patent litigation fights will return almost exclusively to district courts.

Attorneys on both sides of the battle agree that is generally an advantage for patent owners, who would no longer face much of a risk that the PTAB would invalidate a key patent, gutting an infringement lawsuit awaiting trial in district court.

"More has changed in the last eight months before the PTAB than in the previous 14 years," said Nathan N. Lowenstein, managing partner of Lowenstein & Weatherwax of Santa Monica, who has specialized in representing patent owners in inter partes review proceedings.

"The new director has brought the institution decision [over whether to grant inter partes review] under his purview," he added in a phone interview.

While patent policy has changed with each presidential administration, with Democratic appointees generally viewed as more favorable to Silicon Valley companies and other accused infringers, Lowenstein said the latest change -- a far more dramatic one -- "puts those other swings into perspective."

Critics say the new policy will drive up the costs of litigation and take much longer.

"I think it's a disaster for almost everyone involved," wrote Mark A. Lemley, a Stanford Law School professor and partner with Lex Lumina LLP. "The new PTO leadership seems committed to eliminating the IPR process.

"The outcomes are basically the same as for cases that go to a full trial in court, but the process is quicker and costs less than 20% of what it would take to go to trial. Everyone benefits from that except the owners of bad patents who hope to use the cost and delay to extort a nuisance-value settlement."

Lewis E. Hudnell, principal at the Hudnell Law Group in Mountain View who represents both sides in patent disputes, said in a phone interview challengers will have to "be more judicious" about seeking inter partes review.

"The likelihood of success has gone way down," he said.

The question is how both sides will respond to the new rules barring a successful legal challenge. Several attorneys said they expect more patent litigation -- by non-practicing entities in district courts and by companies accused of infringement filing declaratory relief complaints in more favorable venues, especially in California.

Bijal V. Vakil, a partner with Skadden, Arps, Slate, Meagher & Flom LLP in Palo Alto who represents technology companies that are often defendants in patent infringement lawsuits, said his firm is advising clients "to be more vigilant about filing declaratory relief actions alleging invalidity in their preferred forums.

"The data confirms this with slight upticks in the number of declaratory relief actions filed in hot venues, such as the Northern District of California," he added. "We will definitely see an increase in the number of cases being tried as well - to send a clear message to the non-practicing entity community."

Plaintiffs in patent infringement lawsuits often file lawsuits in popular venues such as the District of Delaware, the Western District of Texas and the Eastern District of Texas. Defendants, especially if they are based in California, prefer to file in venues closer to where their clients are based.

Hudnell said that while larger companies may pursue more litigation in district courts, smaller and mid-size companies are more likely to settle claims. "The decision to settle may tick up because [defendants] don't have another option to go to," he said.

Lowenstein said other defendants may file more ex parte reexaminations, a process handled by the patent office to determine whether a patent should have been granted in the first place. The disadvantage for challengers is that reexaminations are handled between the patent office and the patent owner.

"People will adapt," Lowenstein added, speaking of patent attorneys and their clients. "They're going to adjust their strategies."