Chris Loh authored the Law360 article “5 Key Factors Behind USPTO's Inter Partes Review Decisions,” examining the key considerations the U.S. Patent and Trademark Office (USPTO) director identified in a recent precedential order governing inter partes review institution decisions. The following is an excerpt:
In a May 14 precedential order in Magnolia Medical Technologies Inc. v. Kurin Inc., U.S. Patent and Trademark Office Director John Squires has articulated key factors underlying his inter partes review institution decisions.
Inter partes reviews are proceedings conducted before the USPTO's Patent Trial and Appeal Board, through which a party may challenge the validity of issued patents using prior art patents and printed publications.
Until recently, IPRs have been regarded as a readily available resource, based in large part upon an expectation among patent challengers that their IPR petitions would more likely than not to be instituted by the PTAB's administrative patent judges.
No longer. Upon assuming his role as director in September 2025, Squires has ended the USPTO's practice of delegating IPR institution decisions to PTAB judges and has instead exercised his authority under Title 35 of the U.S. Code, Section 314(a), to decide, at his sole discretion, whether to institute or deny institution of all IPR petitions.
He has announced those decisions in a series of summary notices of decisions on institution, which list in bulk the docket numbers of the IPR petitions for which institution was granted or denied, with little or no discussion of why. Those summary notices have been accompanied by a precipitous drop in the IPR institution rate, which now hovers around 25%, in comparison to a prior rate well above 50%.
Squires' summary notices have drawn criticism for failing to explain his institution decisions, leaving IPR petitioners and patent owners to guess about the specific reasons behind them. To be clear, Squires also has issued a few short opinions outside of his summary notices that set forth reasons for some institution decisions.
However, his May 14 order provides important insight into his decision-making process. IPR petitioners should consider the following factors.
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