By Adam Cook, Christian Roberts, and Matt Johnson –
On October 29th, Acting Chief Judge Deshpande and Vice Chief Judge Kim discussed Director institution of AIA trials, where the Director will make all institution decisions (on both discretionary, non-discretionary, and substantive issues). Petitions that the Director deems appropriate for full trials will then be referred to three-judge panels.
The slides from the presentation are accessible here.
A rough transcript from the event is below.
MODERATOR: Hello, everyone. Welcome to this edition of the USPTO Hour series. Apologies for the delay in getting started. I’m from the Patent Trial and Appeal Board, and I’ll be your moderator today. I’m pleased to be here with our Acting Chief, Kalyan, and Michael.
Today’s presentation is a discussion. We are doing our best to provide updates in real time. Parties appearing before the Office, however, should not cite any particular statements made during this presentation as controlling authority. Parties may cite the Director’s memo as appropriate, but they should avoid citing statements made during this presentation.
Before we get started, if you have any questions on the Director institution process, please email them to the address on your screen: USPTOhour@uspto.gov. Please do not put questions in the chat.
A couple of tips on questions. Please email your questions as soon as you can. It takes us some time to process and present them to the judges. Please make your questions direct and focused—one or two sentences at most. Longer questions are difficult to address in this format.
Also, a reminder that copies of the slides and the video recording will be posted to the USPTO Hour website soon.
Turning to today’s agenda, we’ll go over a few statutes, then explain the process, and finally take questions.
Without further ado, let me hand it over to the Chief Judge.
CHIEF JUDGE: Thank you for sharing the agenda. We want to go over some of the statutes from the memo that the Director issued earlier this month.
The first statute is 35 U.S.C. § 6(a). This provision defines the members that comprise the Board. The statute identifies the Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the Administrative Patent Judges. All of these constitute the Patent Trial and Appeal Board. All four statutory members plus the judges are the Board.
Next slide, please.
This statute expressly states that the authority to institute is with the Director. The Director must determine whether a petition meets the reasonable likelihood standard—that the petitioner will prevail on at least one of the challenged claims. Similarly, 35 U.S.C. § 324 addresses the “more likely than not” standard for post-grant review.
There’s also 35 U.S.C. § 3(b)(3)(B). This statute plainly identifies the Director’s power to delegate as the Director deems appropriate.
And, if you have any questions or comments, you can send them to USPTOhour@uspto.gov. I think I stole Ifti’s slide here.
MODERATOR: Now is the time to send in any questions; we can answer them when we get to the end of the presentation. Back to you.
JUDGE DESHPANDE: Let’s get into the Director institution of AIA proceedings and the memo issued earlier this month. As background, on March 26, 2025, the Acting Director issued a memo on the interim processes of the Board, introducing a bifurcated approach with a discretionary consideration phase and a merits and non-discretionary process phase.
Under the briefing framework, a patent owner can file a discretionary denial brief. The petitioner may respond one month later. The patent owner preliminary response timing remains unchanged at three months after the Notice of Filing Date Accorded.
Parties were given guidance on a USPTO webpage describing the bifurcated process. Parties were instructed to ensure that discretionary arguments appear in the discretionary briefing, and that merits and non-discretionary arguments appear in the petition and the patent owner preliminary response.
The main purpose of the bifurcated process is to ensure that discretionary considerations are handled consistently across the PTAB and to improve PTAB efficiency and reduce appeals.
Earlier this month, the Director issued a memo. These are the statutes that expressly identify that the Director makes the determination as to whether the institution standards have been met.
The process not only improves efficiency and consistency, but also adheres to the statutory requirements of 35 U.S.C. §§ 314 and 324.
With that, I’ll turn it over to Vice Chief Judge Michael Kim to talk about the process.
JUDGE KIM: Yes, I will talk a little bit about the process. Kal covered the prior memoranda. I want to make clear that the Director’s October 17, 2025 memorandum does supersede the March 26 memo, but it does not cancel or vacate it. To the extent the interim processes are changed, they’re changed in two respects. First, going forward, routine decisions on institution will be limited to summary notices. Second, merit-based decisions on whether to institute petitions will no longer be referred to a three-member PTAB panel; they will be decided by the Director.
Because of that, let me highlight the first two bullet points. The process for briefing discretionary considerations, as outlined in the interim processes memorandum and on the discretionary decisions webpage, remains the same. The process for briefing both the merits and non-statutory considerations also remains the same: the patent owner will still file a patent owner preliminary response at the three-month mark, and, if the petitioner would like to file a reply and the patent owner would like a sur-reply, they can continue to request those upon a showing of good cause.
Again, all party briefing remains the same. All briefing due dates remain the same. And, of course, the big change now is that, like under the interim process, the Director will consult at least three PTAB judges and determine whether to institute trials in all IPR and PGR proceedings.
Next slide, please.
This is a change. Upon review of the discretionary considerations, the merits, and the non-discretionary considerations, if the Director determines institution is appropriate on at least one ground for at least one challenged claim, the Director will issue a summary notice to the parties indicating that institution is granted.
Similarly, if the Director determines that institution is not appropriate—whether based on discretionary considerations or non-discretionary/merits considerations—the Director will issue a summary notice indicating that institution is denied.
There are three possible branches from the Director’s decision whether to institute. On the left, summary notices will be the primary vehicle for the vast majority of cases—essentially a “thumbs up” or “thumbs down” on institution. The memorandum also describes other outcomes. One is that the Director may decide that a proceeding presents a novel or important factual or legal issue that warrants discussion—perhaps implicating policy or another area the Director would like to address. In those cases, the Director may issue a written decision on institution addressing those issues, whether granting or denying institution.
On the right, the memorandum contemplates a third option: where very detailed, fact-specific issues require in-depth treatment. For example, a case may hinge on a complex claim construction issue; there could be a very involved priority analysis of the patent or of references; or there could be a real-party-in-interest determination that hinges on the facts and requires a full analysis. In those cases, the Director may issue a decision under the Director’s name or may refer the institution decision on those issues to one or more members of the PTAB. In any of these options, any written decision or order will be placed in the file with notice provided to the parties.
Next slide, please.
As far as the trial phase goes, any IPR or PGR that is instituted will be referred to the PTAB to conduct the trial. As required by statute, a three-member PTAB panel will be assigned to that case to conduct the trial. That panel will be assigned under PTAB Standard Operating Procedure 1 (SOP 1), which considers factors such as the judges’ experience, technology, jurisdiction, workload, and other docket due dates.
Beyond that, there are no changes to conducting the actual AIA trial itself. After institution, the case is handed off to the panel, and they will see it through to conclusion.
Next slide, please.
A few practical takeaways. All party briefing stays the same as before October 20. All due dates remain the same. There is one practical change: going forward, for any requests or questions concerning a proceeding prior to institution, please send them to director_DI@uspto.gov. We know some of you are familiar with other addresses, such as trials@uspto.gov and directordiscretionaryconsiderations@uspto.gov. Those addresses are still monitored, and if you send something there by mistake, we will ensure it gets directed appropriately. That said, we recommend that anything prior to institution be emailed to director_DI@uspto.gov.
Thanks—back to you.
MODERATOR: Another reminder for questions: please send them to USPTOhour@uspto.gov. That’s the end of our presentation. We’ll go ahead and answer some questions now.
Let me begin with you, Judge Kim. In which cases will the Director be making the institution decision?
JUDGE KIM: Thank you for the question. As outlined in the memorandum, the Director will determine whether to institute trial in all post-grant review proceedings that are awaiting a decision on institution. In practical terms, those are all proceedings that were not referred to a PTAB panel prior to October 20, 2025.
MODERATOR: So there are cases referred by the Director to the Board prior to October 20 where the Board has not yet issued an institution decision. Will the new procedure apply to those cases as well?
JUDGE KIM: That’s a good question. The answer is no. Because those proceedings were referred to the Board prior to October 20, 2025, a PTAB panel will issue the institution decisions in those proceedings.
MODERATOR: It has been the Board’s practice to issue scheduling orders at the same time as an institution decision. Will that practice continue?
JUDGE KIM: Thank you. The answer is no. If and when the Director decides that institution is appropriate, a panel of three PTAB judges will be assigned to preside over the trial. Because those PTAB judges are assigned after institution and will preside over the trial, they will issue the scheduling order in due course. We understand that parties will be eager for the scheduling order, and panels will aim to issue it promptly.
MODERATOR: Thank you. Judge Deshpande, the Director institution memo says the Director will decide institution in consultation with at least three PTAB judges. Can you explain this process?
JUDGE DESHPANDE: This will be very similar to the discretionary consideration process. When that process is launched, the Director consults with at least three PTAB judges to ensure the appropriate technical expertise and to provide consultation and guidance.
Having learned from the discretionary process, that approach will continue through the institution decision phase, where the Director will consult on both merits and non-discretionary issues.
MODERATOR: If a trial is instituted by the Director, will any of the three PTAB judges who consulted with the Director on institution serve on the three-judge PTAB panel that conducts the trial?
JUDGE DESHPANDE: No, they won’t. Similar to Director Review and the discretionary considerations process, judges who consult with the Director on institution will not serve on the panel during trial.
MODERATOR: The Director institution memo refers to non-discretionary considerations. Could you give examples?
JUDGE DESHPANDE: Yes—anything grounded in other statutes. For example, 35 U.S.C. §§ 311, 312, 315(a), (b), (e), and 325(a), (e). The discretionary considerations webpage includes a list with more examples of non-discretionary considerations.
MODERATOR: We heard that the Director will issue summary notices. What is the timing for these notices?
JUDGE DESHPANDE: In general, summary notices will be posted weekly. That’s consistent with the past cadence for discretionary consideration decisions. In the first few rounds of notices, there will likely be more denials, reflecting the processing phase that cases are currently in. As the process reaches a steady state—likely by the end of November—you’ll see notices reflecting both grants and denials as more cases progress through merits review.
MODERATOR: Judge Kim, the memo states that when the Director decides detailed treatment is appropriate, the Director may refer the institution decision to one or more members of the PTAB. Will that include statutory members identified under § 6(a)?
JUDGE KIM: Yes. The Director may refer a decision on institution to any member of the PTAB. As set out in 35 U.S.C. § 6(a), that includes the Director, Deputy Director, Commissioner for Patents, Commissioner for Trademarks, and the Administrative Patent Judges. All are members of the Board, and the Director can refer a decision to any of them.
MODERATOR: For any such referral, how will the member(s) be selected, and will those selected determine how to treat the issues raised?
JUDGE KIM: The Director may provide instructions, but generally the Director will enter an order instructing the Chief Judge to assign the case to one or more PTAB members. The Chief Judge will then assign the proceeding under SOP 1. The assigned member(s) will decide the referred issues within the scope identified by the Director.
MODERATOR: Judge Deshpande, could you provide more guidance on the kinds of novel or important issues that may warrant a decision on institution?
JUDGE DESHPANDE: The Director may see an issue in a proceeding that is important or novel and issue a decision discussing it. One example could be the quality of the search done during examination compared to how a petitioner identified prior art in the petition. Petitioners might provide a detailed explanation of their search methodology—search terms, databases used, or techniques differing from those used by the examiner. This could be important in determining whether there was potential Office error during examination and whether the case should be instituted. That’s just one example.
MODERATOR: Judge Kim, how does the new process change the procedure for filing motions—for example, a motion to proceed without backup counsel—or other interlocutory requests such as additional pages?
JUDGE KIM: Good practical question. Motions that are preauthorized should be filed within the prescribed time periods, whether under PTAB rules or the interim processes. One shift is that prior to institution, interlocutory motions or requests that are not preauthorized should be emailed to director_DI@uspto.gov. The discretionary decisions email address will remain operational and monitored, but we hope to simplify the process by consolidating pre-institution communications at director_DI@uspto.gov.
After institution, all such interlocutory requests should be sent to trials@uspto.gov.
MODERATOR: Will this new procedure require parties to file additional briefs?
JUDGE KIM: No. Briefing requirements remain the same. The institution decision will be based on arguments in any discretionary denial briefing (if any), the petition, the patent owner preliminary response, and any other authorized briefing. If a patent owner wishes to argue for discretionary denial, the patent owner should file a brief explaining the facts and circumstances warranting discretionary denial; the petitioner may oppose. These points are set forth on the Director discretionary process webpage.
MODERATOR: If a party believes additional pre-institution briefing is necessary, how should they make that request?
JUDGE KIM: The overall process hasn’t changed. They can email director_DI@uspto.gov to make the request. The standards haven’t changed either: the requesting party should provide a brief statement of good cause and indicate whether the request is opposed.
MODERATOR: Judge Deshpande, Director Review has been available for institution decisions for some time. Can a party continue to request Director Review or rehearing of Director summary notices?
JUDGE DESHPANDE: Yes. Those processes remain in place. A reminder: for a grant of institution, a request for Director Review or rehearing must be filed within 14 days; for a denial of institution, within 30 days. Both processes remain available for Director institutions. Please be mindful of the rehearing standard.
MODERATOR: If a party files a rehearing request on an institution decision that was decided by a three-judge PTAB panel prior to the Director making institution decisions, will the rehearing be decided by the panel or by the Director?
JUDGE DESHPANDE: It will be decided by the panel. As Judge Kim noted, cases affected by the new memo are those awaiting an institution decision when the memo issued. If the decision on institution or a referral decision issued prior to the October 20 memo, the PTAB panel will handle the rehearing.
MODERATOR: How are conflicts of interest addressed for the Director and PTAB judges involved in the Director institution process?
JUDGE DESHPANDE: If the Director or any consulting member has a conflict, they recuse themselves from participating in any dialogue regarding the proceeding. As a matter of policy, PTAB judges participating in the process follow conflict guidance set forth in SOP 1, along with the regular rules governing conflicts. There is more guidance on the Director and discretionary consideration webpages.
MODERATOR: For pending PTAB proceedings subject to the Director institution process that have not yet received a decision on institution, what is the contact for case-specific questions?
JUDGE KIM: Please submit all pre-institution, case-specific questions to director_DI@uspto.gov. After institution, questions should be sent to trials@uspto.gov.
MODERATOR: What about general questions relating to the Director process?
JUDGE KIM: Same contacts as above.
MODERATOR: How much of his own time does the Director expect to devote to these decisions?
JUDGE DESHPANDE: He will devote as much time as needed to resolve each case. There’s no set amount; it depends on the case.
MODERATOR: If a request for an IPR on a first patent was discretionarily denied based on expectations, will requests for IPRs on the rest of the patents be discretionarily denied if the prior art is identical across all patents?
JUDGE DESHPANDE: That question touches a different memo dealing with discretionary considerations. It’s difficult to answer a hypothetical with limited facts. Many factors can be relevant, and it would be a disservice to give a definitive answer here. We encourage parties to fully flesh out the relevant facts and arguments for why a petition should proceed or why discretionary denial is warranted. Decisions are based on the full record of arguments presented.
MODERATOR: What will the summary institution denial notices look like? Will they contain reasoning and analysis like recent discretionary denial decisions?
JUDGE KIM: The short answer is no. Summary notices will simply indicate the outcome—grant or denial—unless the Director chooses one of the other routes discussed earlier (issuing a written decision addressing a novel or important issue, or referring the matter for detailed treatment). Summary notices themselves will be very brief.
MODERATOR: You mentioned briefing remains the same. Does that mean the merits and discretionary issues are still addressed in bifurcated papers?
JUDGE KIM: Yes. Discretionary considerations follow the interim process timeline, where the patent owner submits briefing at the two-month mark and the petitioner follows one month later. Merits and non-discretionary considerations proceed on the normal timeline in the petition and patent owner preliminary response. If there is good cause for a reply and sur-reply, the parties may request authorization.
MODERATOR: Will the Director issue one decision that either denies on discretion, denies on the merits, or institutes? Is it correct that we will not know whether a denial was based on discretion or on the merits?
JUDGE KIM: That is correct for summary notices. Because there won’t be an explanation, the basis for denial will not be indicated in the summary notice.
MODERATOR: Should the parties no longer expect a separate decision on discretionary denials one month after the patent owner preliminary response has been filed?
JUDGE DESHPANDE: That’s correct. Now that the Director is handling institution decisions, there will be the Director’s decision—whether a summary notice, a detailed written decision, or a referral. There will not be separate discretionary denial decisions unless the Director identifies an important or novel issue to address, in which case a decision may issue.
MODERATOR: Is there guidance on timing for when the Director intends to begin issuing decisions?
JUDGE DESHPANDE: As with discretionary consideration decisions, we plan a roughly weekly cadence. Early rounds may contain more denials as cases move through the process; once we reach a steady state, you’ll see both institutions and denials.
MODERATOR: Please detail the timing of the three branches you described, especially referral, which would need to occur early enough for an institution decision to be issued by six months from the Notice of Filing Date Accorded.
JUDGE KIM: We will operate on a roughly weekly cadence and issue summary notices or other decisions as they’re ready. More detailed Director decisions or referred decisions will take additional time for internal review or panel analysis, and we have accounted for that in our workflow. We remain cognizant of the statutory six-month deadline and will meet it.
MODERATOR: Will the Director’s summary notices state whether a denial is discretionary or on the merits?
JUDGE DESHPANDE: No. Summary notices will not separate or identify the basis for denial.
MODERATOR: Has the Director’s review of the merits process started?
JUDGE DESHPANDE: It is underway in terms of planning and preparation. Decisions will issue when they are ready.
MODERATOR: We have quite a few email addresses now. After institution, should case requests go to the trials inbox or one of the Director’s inboxes?
JUDGE KIM: It depends on the stage of the case. Before institution, because the Director is making institution decisions, communications should go to director_DI@uspto.gov. After institution, because a trial has been instituted, communications should go to trials@uspto.gov. During the transition, if something is sent to the wrong inbox, we will monitor and redirect as needed.
MODERATOR: Someone is asking about supplemental pre-institution briefing requests that were sent before October 17. Will the original panel handle those? How will those be addressed?
JUDGE DESHPANDE: If the request was submitted and has not yet been authorized, it will be handled under the Director’s institution processes. You don’t need to resend the request, but sending a short note to director_DI@uspto.gov to flag the pending request is helpful; we’re working to ensure everything is captured.
MODERATOR: Another question on timing. Will the summary institution decision be closer to the three-month mark or the six-month mark after the Notice of Filing Date Accorded?
JUDGE DESHPANDE: It will be before the six-month mark. We will meet all statutory deadlines. Beyond that, the timing depends on when the decision is ready. Once ready, it will be promptly issued to the parties and made public.
MODERATOR: Judge Deshpande, you mentioned that the judges the Director consults with will be consulted on merits and non-discretionary considerations, suggesting they will not be consulted on discretionary issues. Could you clarify?
JUDGE DESHPANDE: To clarify: judges are consulted on both discretionary considerations and merits considerations. Judges are involved throughout, and consultation covers both categories. Thank you for the question—if I misspoke earlier, that was not my intent.
MODERATOR: One more. What will be the document type for the Director’s decisions on the PTAB Open Data site?
JUDGE KIM: These decisions will appear on the PTAB Open Data site. Because they are institution decisions, they may appear under that document type. Please stay tuned for the exact labeling.
Matthew Johnson
Latest posts by Matthew Johnson (see all)
- PTAB Presentation Regarding Director Institution – Slides and Rough Transcript - October 30, 2025
- Divergent Claim Construction Results in Discretionary Denial - October 29, 2025
- Director Takes On All Institution Duties - October 17, 2025