By Carl Kukkonen and Matt Johnson –
On January 9, 2026, USPTO Director John A. Squires designated four recent discretionary-denial rulings as precedential and nine more as informative, formalizing a developing framework for how and when the Office will exercise discretion to institute AIA trials. The designations crystallize themes first articulated by then-Acting Director Coke Morgan Stewart-now adopted and extended by Director Squires-on joinder, time bars, repeat challenges, the relative posture of PGRs versus IPRs, “settled expectations,” parallel litigation, inconsistent claim constructions, large multi-patent disputes, and examiner error. On January 13, 2026, the USPTO further designated as precedential a decision addressing parallel petitions-emphasizing that multiple petitions on the same claims should be rare-and designated as informative a decision confirming that a significant intervening change in law can weigh against discretionary denial.
What was designated precedential
Director Squires’ precedential set addresses four recurring scenarios: joinder “copycat” petitions, one-year time-bar fairness, repeat challenges after a non-instituted PGR, and the Office’s policy favoring timely PGRs over IPRs for newly issued patents. These holdings now bind panels and parties alike.
First, on joinder, the Office clarified that a petition seeking joinder must be capable of standing on its own; the discretionary analysis evaluates the petition as if joinder were unavailable to ensure the Office does not end up maintaining a proceeding it would not have otherwise instituted if the original petitioner exits. This principle arose in a “copycat” challenge by Elong and Xiamen Longstar against a Feit Electric patent, and is now precedential as articulated in the designation summary.
Second, on time bars, the Office held that petitions filed by time-barred parties “should proceed only in exceptional circumstances,” granting discretionary denial against Realtek’s IPRs on ParkerVision’s patents when Realtek missed the one-year § 315(b) deadline after service of a complaint and failed to show circumstances warranting an exception. The decision grounds the denial in fairness and efficient use of Office resources and is now binding guidance.
Third, on repeat challenges, the Office made clear that a non-instituted PGR does not, by itself, foreclose a later IPR. In LifeVac v. DCSTAR, the Director declined to deny on discretion where an earlier PGR had not been instituted, emphasizing that PGRs are favored when timely, but a failed, non-instituted PGR does not automatically trigger § 325(d) or General Plastic concerns; the petition proceeded to the Board.
Fourth, the Office confirmed that PGRs are preferred vehicles for very recent patents because they occur close to examination, within nine months of grant, and before expectations settle. In Multi-Color v. Brook & Whittle, the Office declined to deny a timely PGR notwithstanding parallel district court actions, underscoring that PGRs filed within the statutory window promote early validity review and generally weigh against discretionary denial.
What was designated informative
Nine additional decisions were designated informative to guide practice across several themes: “settled expectations” as patents age, parallel litigation dynamics, inconsistent positions on claim construction, large-scale disputes, and examiner error. Although not binding, these designations reflect the Office’s current thinking and will influence case strategy.
On “settled expectations,” the Office introduced a calibrated approach: the longer a patent has been in force, the more settled the expectations, which can favor discretionary denial absent persuasive countervailing reasons. Dabico’s challenge to an eight-year-old AXA Power patent was denied on these grounds where the petitioner failed to show why an IPR would be an appropriate use of resources; the Office stressed there is no bright-line, but it referenced a six-year horizon as a meaningful dividing line in the evolving doctrine.
The settled-expectations analysis remains context-dependent. In Amgen v. BMS, two IPRs against patents six and seven years post-grant were discretionarily denied, while a challenge to a 2022 patent proceeded; the Office explained that younger patents typically lack strong settled expectations unless the patent owner substantiates extraordinary investment or related circumstances.
At the same time, a well-supported showing can overcome age-based expectations. Home Depot’s petition against a more-than-12-year-old H2 Intellect patent was allowed to proceed because the record showed the patent’s prior enforcement targeted smartphones, tablets, and watches-not hardware retail-so Home Depot reasonably lacked notice it should have the patent “on its radar.” The Office treated this mismatch as cutting against the patentee’s settled expectations.
The Office also addressed reliance and conduct-based expectations. Apple’s IPRs against Ferid Allani’s patents were allowed to proceed despite a 2012 contact and awareness, where Apple had concluded no license was needed and the patents were not asserted until after expiration; in that posture, the Office declined to exercise discretion to deny.
By contrast, Alliance Laundry’s IPR against PayRange was denied in part because it was the third petition on the same patent following two merits denials, and there was evidence of licensing activity creating expectations; a stay of the parallel district court litigation did not overcome the cumulative discretionary factors favoring denial.
On parallel litigation, the Office permitted additional PTAB challenges where the district court record had expanded to include new claims not previously at issue, as in the Elong/Xiamen/Savant challenge to a Feit patent; the incremental claims justified PTAB review notwithstanding related proceedings.
On inconsistent positions, the Office warned that parties taking different claim constructions in district court and at the PTAB must explain why divergence is warranted under the Phillips standard applied in both forums. In Sun v. Nivagen, the Office denied institution where the petitioner advanced a narrower “composition” construction in court but a broader plain-meaning construction at the PTAB without adequate justification.
On large multi-patent disputes, the Office recognized the PTAB’s comparative advantage in addressing numerous patents across diverse families and technologies. In Tesla v. Intellectual Ventures, the Office denied discretionary denial to allow PTAB review to proceed in parallel with a sprawling district court case involving eleven patents from nine families.
On examiner error, sufficiently supported allegations of material prosecution mistakes can outweigh other discretionary factors. In Padagis v. Neurelis, the Office referred three petitions to the Board where the petitioner identified potential examiner error impacting priority and entitlement, notwithstanding timing and parallel-proceedings concerns.
January 13 designations: parallel petitions (precedential) and significant change in law (informative)
On January 13, 2026, the USPTO designated as precedential PacifiCorp/MidAmerican v. Birchtech, in which the Director vacated and remanded decisions instituting parallel petitions challenging the same claims under different priority-date theories, explaining that parallel petitions should be rare and that, where priority is disputed, the Board should either resolve priority at institution or institute, at most, the first-ranked petition.
The Office simultaneously designated as informative Top Glory Trading Group Inc. v. Cole Haan LLC, denying a request for discretionary denial in light of the Federal Circuit’s LKQ decision, which significantly changed design-patent obviousness, and explaining that such an intervening change in law can outweigh settled-expectations arguments.
Practical takeaways for petitioners and patent owners
The designations converge on a few practice-critical points. Petitions filed after a § 315(b) bar face an uphill battle absent exceptional circumstances, and “copycat” joinder petitions must meet the institution standard independently. Early PGRs are favored for newly issued patents, while older patents demand a persuasive case that PTAB review remains a good use of resources in light of settled expectations-though age is not dispositive where the record shows lack of notice, non-overlapping markets, reliance by conduct, or clear examiner error. Parties should harmonize claim-construction positions across forums or thoroughly explain divergences. The PTAB remains a preferred forum for sorting complex, multi-patent disputes, but the Office is wary of multiple petitions on the same claims; targeted, best-foot-forward filings aligned to a single priority theory are more likely to proceed.
In short, Director Squires has converted an interim, holistic framework into settled guidance: timely, well-justified challenges that respect statutory deadlines, avoid duplicative litigation tactics, and present coherent positions across forums will fare best under the Office’s renewed approach to discretionary denial.
Carl Kukkonen
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