By Thane Bonnett,* Daniel Sloan, and Matt Johnson –
On October 17, 2025, the USPTO issued a notice of proposed rulemaking (“Notice”) regarding the rules of practice for inter partes review before the PTAB. The proposed rules do not apply to post grant review petitions, cementing statements that Director Squires has made that earlier challenges are favored. The proposed changes, adding provisions to the end of 37 C.F.R. 42.108, would (1) require petitioners to stipulate not to pursue invalidity challenges under anticipation or obviousness grounds in other venues, (2) limit the circumstances in which a petition for IPR can be brought when claims were previously found not invalid (or not unpatentable) by a district court, the ITC, or in another USPTO proceeding, and (3) limit the availability of challenges based on the timing of parallel litigation proceedings. Each of these changes will be discussed in more detail below. Comments on the proposed changes are due December 2, 2025. The USPTO stated that the proposed changes in the Notice will “increase the reliability of patent rights and the predictability of patent disputes,” and decrease the costs of litigation and transaction costs associated with licensing.
Stipulation
(d) Required stipulation for efficiency.
Inter partes review shall not be instituted or maintained unless each petitioner files a stipulation with the Board and any other tribunal where it is litigating or later litigates regarding the challenged patent, stating that if a trial is instituted, the petitioner and any real party in interest or privy of the petitioner will not raise grounds of invalidity or unpatentability with respect to the challenged patent under 35 U.S.C. 102 or 103 in any other proceeding.
Proposed 37 CFR § 42.108(d) would require petitioners to stipulate that they (and any real party in interest or privy of the petitioner) will not pursue invalidity challenges under anticipation or obviousness grounds in other venues. This stipulation only applies if trial is instituted. The required stipulation is broad, covering any grounds of novelty or obviousness. Notably, this includes grounds based on product prior art, which cannot be raised in an IPR but could otherwise be raised in other venues.
This will make it increasingly important for alleged infringers to consider how a petition fits into their overall litigation strategy and may encourage them to choose between the PTAB and district court rather than pursuing both in parallel. While the PTAB is typically a more cost effective forum, the high rate of institution denials and unavailability of appeals under § 314(d) may encourage most alleged infringers to choose litigation.
Prior Proceeding
(e) Claims found valid in prior proceedings.
Inter partes review shall not be instituted or maintained if a challenged claim or an independent claim from which a challenged claim depends:
(1) U.S. District Court Trial – Was found not invalid under 35 U.S.C. 102 or 103 by a district court or jury following a bench trial or jury trial in a decision or verdict that has not been vacated or reversed in relevant part;
(2) U.S. District Court Summary Judgment – Was found not invalid by a district court in a summary judgement decision finding no dispute of material fact under 35 U.S.C. 102 or 103 that has not been vacated or reversed in relevant part;
(3) U.S. International Trade Commission – Was found not invalid under 35 U.S.C. 102 or 103 in initial or final determination of the U.S. International Trade Commission that has not been vacated or reversed in relevant part;
(4) PTAB Final Written Decision – Was found not unpatentable in a final written decision of the Board under 35 U.S.C. 318(a) or 328(a) that has not been vacated or reversed;
(5) Ex Parte Reexamination – Was found patentable in an office action or decision by the Board following a reexamination request filed under Chapter 30 of Title 35 United States Code by someone other than the patent owner, the patent owner’s real party in interest or privy; or
(6) Federal Circuit – Was found unpatentable or invalid under 35 U.S.C. 102 or 103 in a decision, but that decision was reversed in relevant part by the U.S. Court of Appeals for the Federal Circuit.
Proposed 37 CFR § 42.108(e) would foreclose inter partes review of claims that were previously found not invalid as anticipated or obvious by a district court, the ITC, or not unpatentable in another USPTO proceeding, including challenges pursued by other parties. The proposed amendment also says that when the Federal Circuit has reversed a finding of invalidity, inter partes review is shall not be maintained, closing a potential loophole. Because a proceeding brought by any third party can implicate § 42.108(e), the public collectively is limited to “one bite at the apple.”
The new rule incentivizes petitioners to file early in the life of a patent, to ensure that they are the party who gets that first bite. Waiting to bring a petition carries the risk that a third party will bring a weak claim against the same patent, resulting in a not-invalid finding that would foreclose future IPRs. The “settled expectations” factor already incentivizes petitioners to file early in the life of a patent; this new rule increases the incentive.
Parallel Proceedings
(f) Parallel Litigation – Inter partes review shall not be instituted or maintained if, more likely than not, any of the following will occur, with respect to a challenged claim or an independent claim from which a challenged claim depends, before the due date for the final written decision pursuant to 35 U.S.C. 316(a)(11):
(1) U.S. District Court – A district court trial in which a party challenges the patent under 35 U.S.C. 102 or 103;
(2) U.S. International Trade Commission – an initial or final determination of the U.S. International Trade Commission with respect to 35 U.S.C. 102 or 103; or
(3) PTAB Final Written Decision – issuance of a final written decision by the Board under 35 U.S.C. 318(a) or 328(a).
Proposed 37 CFR § 42.108(f) would prevent an IPR from being instituted or maintained in scenarios where a parallel proceeding involves anticipation or obviousness challenges with respect to a challenged claim or independent claim from which it depends. Specifically, the institution bar would apply if it is more likely than not that any district court trial, ITC final or initial determination, or other PTAB final written decision (whether the Petitioner of the IPR at issue is involved or not) will occur before the due date for the final written decision. This aligns with Fintiv, which gave the PTAB discretion to deny institution when there was a parallel proceeding that would reach its conclusion before the PTAB’s Final Written Decision due date. This rule change may allow patent owners to avoid IPR entirely by filing infringement lawsuits in venues with a record of fast time-to-trial, such as the Western District of Texas, the Eastern District of Virginia, and the ITC.
Once parallel proceedings have been filed, the parties are in a procedural race. Venue transfers, discovery timelines and stays may take on new importance, and may overshadow practice on the merits early in matters. Anything that alters the timeline of a district court case could be the difference between the institution or denial of a parallel IPR.
“Extraordinary Circumstances” Exception
(g) Institution in extraordinary circumstances. If a panel of the Board determines that extraordinary circumstances warrant institution notwithstanding paragraphs (d), (e), or (f) the Panel shall refer to matter to the Director who may personally institute inter partes review. Extraordinary circumstances may include a determination by the Director that the prior challenge barring institution was initiated in bad faith, e.g., for the purpose of preventing future challenges, or that the prior challenge is rendered irrelevant in view of a substantial change in a statute or precedent of the Supreme Court of the United States. Unusual and extraordinary circumstances shall not include new or additional prior art, new expert testimony, new caselaw (except as provided above) or new legal argument, or a prior challenger’s failure to appeal. Neither the Director nor the Board shall waive the requirements of paragraphs (d), (e), or (f) of this section except as provided in this paragraph. Frivolous or abusive petitions under this paragraph may be appropriately sanctioned, including with an award of attorneys’ fees.
Proposed 37 CFR § 42.108(g) would provide an exception to the first three changes in “extraordinary circumstances.” This will prevent patent owners from using the new rules to game the system in an attempt to strengthen their patents, such as by filing a reexamination against their own patent or other shenanigans to implicate the new rules.
The proposed rule is explicit that the extraordinary circumstances exception would not apply on the basis that different prior art or caselaw were used in the prior proceeding. It also would not apply on the basis that the claimant in a prior proceeding failed to appeal an adverse verdict. This exacerbates the risk that an IPR petition could be undermined by a weak, unappealed challenge brought by a third party prior to the current IPR challenge.
* Thane is a member of the New Lawyer’s Group in Jones Day’s Pittsburgh Office.
Matthew Johnson
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