Institution Rates Dropped Further as Stewart Continued Discretionary Denial Expansion
October 22, 2025
The Patent Trial and Appeal Board (PTAB) instituted trial in just 35% of the America Invents Act (AIA) review petitions addressed in Q3, a significant drop from that same quarter last year (during which the institution rate was 72%) and from Q2 2025 (51%)—which itself was down substantially compared to Q1 (68%).
The downward trend in institution rates is largely the result of changes to the PTAB’s discretionary denial practices that were implemented over the course of this year by Deputy Director Coke Morgan Stewart, who served as acting USPTO director until the September 18 confirmation of new USPTO Director John Squires.
Key among those changes was the February 2025 withdrawal of June 2022 guidance issued by former Director Kathi Vidal that had limited discretionary denials based on parallel litigation under the NHK-Fintiv rule in several respects, leading to a drop in discretionary denials. The following month, Stewart assumed a more direct role in addressing discretionary denials—establishing a interim two-stage process for AIA review institution under which the director would first decide requests for discretionary denial before a panel then considers the merits of a petition. Under that process, the director made that discretionary denial assessment based on an expanded set of factors—including some based on various PTAB precedents, including Fintiv; General Plastics, which lays out factors under which multiple petitions from the same petitioner can be discretionarily denied; and Advanced Bionics, which covers discretionary denials where the USPTO has previously considered the asserted prior art or arguments. The new process also allowed the director to issue such denials based on the PTAB’s workload, including its ability to hit the statutory deadlines for AIA review trials.
Stewart has since used that authority to issue a series of rulings that have markedly expanded the use of discretionary denials. Perhaps the most significant, and most hotly debated, has been a line of decisions that deny institution based on the “[s]ettled expectations of the parties, such as the length of time the claims have been in force” (another one of the factors established under the March memorandum detailing the new institution process). Beginning with her early June decision in iRhythm Technologies v. Welch Allyn, Stewart has made it clear that she will deny institution solely on the basis of such “settled expectations” for patents that have been in force for longer periods of time.
In Q3, Stewart issued rulings further clarifying this factor, denying review for patents as recently issued as three years ago. Stewart also continued to closely scrutinize the relative proximity of the PTAB’s final written decision deadline and the scheduled trial date in parallel litigation—a factor that the Deputy Director has increasingly invoked since the withdrawal of Vidal’s guidance, which had limited such rulings.
Additional changes came after the end of the third quarter. On October 17, Squires announced that the USPTO director would now handle the entire AIA review institution process, including the assessment of discretionary denial requests as well as the merits and nondiscretionary factors—making those determinations with no accompanying written decisions in most cases. That same day, the USPTO also published a Notice of Proposed Rulemaking (NPRM) that would bar AIA review institution unless petitioners stipulate not to raise invalidity challenges under Section 102 or 103 in parallel litigation, where the parallel forum would likely address validity on that basis before the PTAB issues its final written decision, or where the patent’s validity has already been upheld by another forum.
For more on Stewart’s decisions, other discretionary denial considerations, and key developments impacting the PTAB, see RPX’s third-quarter review. Additional coverage of Squires’s subsequent revamp of the institution process, and of the new rulemaking proposal, is available here.