IP Law Daily, PATENT—P.T.A.B.: USPTO Director outlines discretionary policy for denying IPRs, denies petition, (May 19, 2026)

By Steven D. Cole, J.D.

Director Squires calls some instances of IPR improper, an attempt at a “second bite at the apple,” and not what Congress intended.

USPTO Director John A. Squires, on May 14, 2026, designated as precedential his decision to deny institution of inter partes review (IPR) sought by a petitioner who had been unsuccessful in district court. After explaining at length that Congress created this as an alternative to litigation with the goal of resolving patent disputes more efficiently, the Director denied the instant petition, labeling it as an attempted “second bite at the apple.” As a result of the precedential decision, those who have already litigated are likely to encounter a greater chance of a discretionary denial (Magnolia Medical Technologies, Inc. v. Kurin, Inc., No. IPR2026-00097 (P.T.A.B. May 14, 2026)).

IPR as a litigation alternative. The bulk of the opinion explains the policy framework underlying the Patent Trial and Appeal Board’s (PTAB) discretionary denial of review. Congress established IPRs when it passed the America Invents Act (AIA) in 2011 in order to provide a quick and cost-effective alternative to district court patent litigation for resolving disputes over patent validity. Fifteen years later, it has become apparent that many petitioners seek AIA review in parallel with district court proceedings in order to gain litigation leverage. For instance, petitioners sometimes misuse AIA review for the purpose of harassing their opponents or to take inconsistent positions—i.e., pursuing alternative theories under a wait-and-see approach. Regardless of the reason, the result is that parties often end up spending more time and resources litigating patent validity than they would have in the absence of AIA reviews.

While district court litigation has its place in resolving private disputes, AIA reviews are primarily related to the public interest, the opinion notes. In particular, the USPTO institutes IPRs to reconsider its own decisions and correct possible errors in the original patent grant, after a petition is filed challenging patent claims. Congress conferred on the USPTO discretion with regard to IPR institution, management of AIA proceedings, and final decision-making authority to determine whether the patent at issue had been improvidently granted.

The instant case. In this instance, the Director determined that the petitioner was attempting to circumvent the proper use of the IPR process as an alternative to litigation and, instead, seeking a “second bite at the apple” after losing in district court. There, the petitioner’s anticipation and obviousness grounds were not presented to the jury because the court precluded the testimony of its invalidity expert. The jury then determined that the patent was not invalid. Notably, the district court precluded the expert due to his failure to disclose the claim construction upon which he based his anticipation and obviousness opinions, something that was within the petitioner’s control.

The petitioner contended that, because its expert’s testimony was precluded, no forum had adjudicated the validity or patentability of the challenged claims under 35 U.S.C. § 102 or 103. The Director disagreed, explaining that the lack of a jury verdict as to these issues in the now-completed jury trial did not entitle the petitioner to relitigate them before the USPTO: “To permit such would fly in the face of the Congress’s stated goals for the AIA to be used as a litigation alternative.”

Significance. This decision reinforces the PTAB’s policy of exercising its discretion to deny AIA review petitions that clearly do not address public interest concerns with regard to patent grants, or that are evidently not filed for the purpose primarily contemplated by Congress—namely, as an alternative to costly and time-consuming district court litigation.

The Case is No. IPR2026-00097.

Judge: Squires, J.

Attorneys: Frederic M. Meeker (Banner Witcoff) for Magnolia Medical Technologies, Inc. Matthew Smith (Mewburn Ellis) for Kurin, Inc.

Companies: Magnolia Medical Technologies, Inc.; Kurin, Inc.

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