USPTO Director Institution Decisions: Back To The Future?

by | Dec 10, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By John Marlott –

USPTO Director Squires recently published an open letter announcing that he was “Bringing the USPTO Back to the Future” by assuming responsibility for all IPR and PGR institution decisions.  Why the reference to the 1980s movie recently re-released in theaters on its 40th anniversary?

Having the Director make the institution decision marks a significant procedural departure from PTAB practice since post‑grant trials began in September 2012.  By rule, the Director historically delegated the IPR/PGR institution decision to the same panel of PTAB APJs that would later adjudicate the trial.  See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”).  Having grown accustomed to this decision-making framework—which has been in place for the last 13 years—practitioners may not recall that the Director’s delegation of the initial institution decisions to the PTAB was challenged in the early days of the AIA.

Over a vigorous dissent by Judge Newman, the Federal Circuit held in Ethicon Endo-Surgery, Inc. v. Covidien LP, that the AIA does not preclude the Director from delegating the institution authority to the PTAB.  812 F.3d 1023 (Fed. Cir. 2016).  While all parties in Ethicon agreed that it would be permissible for the Director to delegate the institution decision to an examiner or solicitor, for example, the dispute was whether the delegation could be made to the PTAB, thereby collapsing the institution and adjudication function into a single decisionmaker.

The majority held that “[t]here is nothing in the Constitution or the [AIA] that precludes the same [PTAB] panel from making the decision to institute and then rendering the final decision.”  Id. at 1033.  Judge Newman disagreed, writing in dissent that the AIA “requires that the trial be conducted, and the matter finally decided, by a different part of the PTO than makes the decision to institute.”  Id. at 1037.  She pointed to criticisms of “the ‘actual or perceived bias against the patent owner’ because the [panel of PTAB] judges are ‘put in the position of defending their prior decisions to institute the trial,’” and she maintained that “[b]y placing the institution decision in different hands than the trial, Congress acted to preserve the process from human frailty.”  Id. at 1038-39. See also Mobility Workx, LLC v. Unified Patents, LLC, 15 F.4th 1146, 1158-65 (Fed. Cir. 2021) (Newman, J., dissenting); Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1340 (Fed. Cir. 2016) (Newman, J., dissenting).

The full Federal Circuit denied the patent owner’s request for en banc rehearing in Ethicon, with Judge Newman again dissenting at length and stating that “[i]gnoring the statutory division of responsibility is contrary to the plain text and carefully designed structure of the [AIA], and imperils the public confidence in the fairness and correctness of these proceedings.”  Ethicon Endo-Surgery, Inc. v. Covidien LP, 826 F.3d 1366, 1368 (Fed. Cir. 2016) (“This division of authority protects patentees by ensuring that the threshold decision to institute neither pre-ordains nor prejudices the later decision on the merits. Independence of the two decision-makers is crucial to achieving the statutory purpose.”).  The patent owner petitioned the Supreme Court for a writ of certiorari—with amicus support from PhRMA, BIO, and a group of large patent owners—but the Supreme Court declined review in Ethicon in January 2017.  580 U.S. 1083 (2017).

In the past, for the first 13 years of post-grant proceedings, a PTAB panel has made the up/down decision on whether to institute an IPR or PGR.  In the future, after October 20, 2025, the Director will make that decision.  Having the Director make the institution decision is the way that some—including Judge Newman—thought it should have been done all along.

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John Marlott

Partner at Jones Day
John Marlott brings more than 30 years of intellectual property law experience to his role as lead counsel in IP disputes for Jones Day clients. He focuses on high-stakes district court and ITC patent litigation, post-grant patent proceedings before the PTAB, and appeals to the U.S. Court of Appeals for the Federal Circuit.