On October 17, 2025, USPTO Director John Squires issued a memorandum announcing that he would be sole decision-maker for institution of inter partes review (IPR) and post-grant review (PGR) proceedings. In this same memo, Squires stated those decisions would be determined “based on discretionary considerations.” In the time since, Squires has used a series of decisions to articulate his view of the purpose of these types of proceedings and how it shapes his discretionary analysis. Most recently, in Magnolia Medical Technologies, Inc. v. Kurin, Inc., IPR2026-00097, Squires reiterated his stance that discretionary authority will be used to narrow AIA review to its regulatory purpose.
Squires’s previous decisions, taken together with Magnolia Medical, offer a prescreening checklist for practitioners considering whether to file an IPR petition. As discussed in our May 6th blog post, this discretion is generally nonreviewable. Therefore, failing to work through this checklist before investing in a petition may be costly.
- Was the patent previously litigated?
Squires has repeatedly emphasized that the primary purpose of AIA proceedings is “to provide a quick and cost-effective alternative to district court patent litigation for resolving disputes over patent validity.” Petitioners looking to relitigate or to attempt a different strategy at the USPTO are likely out of luck, as the director sees this as “a second bite at the apple.”
In Magnolia Medical, the patent at issue (U.S. Patent No. 12,138,052) was previously challenged in district court, where a jury found it not invalid. Magnolia’s subsequent IPR petition again challenged the patent’s validity, arguing that the grounds being presented in the petition were not presented to the jury because the court had excluded the proffered expert testimony concerning those references. Squires declined institution in the face of a jury finding upholding validity, regardless of whether the petitioner was precluded from litigating obviousness and anticipation in the district court. - Can multiple petitions be combined into a single petition?
Squires is of the view that parallel petitions on the same claims should be rare.
In PacifiCorp v. Birchtech Corp., IPR2025-00687, -00688, -00717, -00718, PacifiCorp filed four petitions, two for each asserted patent premised on different possible priority dates. Squires vacated institution and remanded for each of the four decisions because he believed the multiple petitions created “a substantial and unnecessary burden on the Board and the patent owner[,] and could raise fairness, timing, and efficiency concerns.” - Is the litigation interpretation different from the AIA review interpretation?
To conserve the USPTO’s resources and avoid duplicative litigation, Squires has limited the use of IPR proceedings to advance positions inconsistent with those taken in parallel forums.
In Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025-00632, the petitioner advanced a claim construction inconsistent with its district court position and offered no explanation, prompting the director to vacate institution. - Are you a proper real-party-in-interest?
As the Supreme Court held in Return Mail Inc. v. United States Postal Serv., 587 U.S. 618 (2019), the U.S. government cannot seek IPR. Squires extended that holding to reach foreign governments in Tianma Microelectronics Co. v. LG Display Co., IPR2025-01579, including cases where a foreign government is a real-party-in-interest. - Has the patented device been in commerce for many years?
Building on a position first articulated by former Acting Director Coke Morgan Stewart, Squires has held that the length of time a patent has been in force weighs against institution of an IPR.
In cases such as Dabico Airport Sols. Inc. v. AXA Power ApS, IPR2025-00408, where the patent had been in force for many years, Squires declined to institute. By contrast, in Home Depot U.S.A., Inc. v. H2 Intellect LLC, IPR2025-00480, where the patent had not been commercialized, asserted, licensed, or otherwise applied in the petitioner’s technology space, Squires allowed the petition to proceed.
If the answer to any of the above is yes, the petitioner should seriously reconsider investing time and money in an AIA review — unless the answer to the following is also yes. - Was there USPTO error?
The trump card is USPTO error, i.e., a substantial showing of error by the office during examination that overcomes other factors weighing in favor of discretionary denial.
In Padagis US LLC v. Neurelis, Inc., IPR2025-00464, despite parallel litigation in district court, Squires declined to exercise discretionary denial. Because the examiner’s priority-date determination contradicted an earlier PTAB ruling, raising concerns of material error, the director found that “it is an appropriate use of Office resources to review the potential [material] error” by the office.
While no factor is dispositive, the director can terminate a proceeding even after a final written decision, as in Verizon Connect Inc. v. Omega Patents, LLC, IPR2023-01162, Paper 40 (June 3, 2025), so working through these questions before investment is made is a must.