An Open Letter on the Revision to the Rules of Practice Before the Patent Trial and Appeal Board

Renner, Otto, Boisselle & Sklar, LLP (“Renner Otto”) welcomes the opportunity to offer comments in response to the U.S. Patent and Trademark Office’s (USPTO’s) publication of the Notice of Proposed Rulemaking on “Revision to Rules of Practice Before the Patent Trial and Appeal Board” (the “Notice”), [Docket No. PTO-P-2025-0025] RIN 0651-AD89 (Oct. 17, 2025). It should be noted that these comments should not be taken as representing or necessarily reflecting the views of any of Renner Otto’s clients, or of its induvial attorneys.

The comments below are made with regard to the discretion of the Director in this area. While the Director’s discretion has considerable breadth, that discretion still has constraints. These constraints appear to have been overstepped by some of the rules proposed in the Notice.

The Notice makes multiple mentions of the discretion of the Director. For example, it is stated that the inter partes review (IPR) provisions “provide the Director broad discretion to decide not to proceed with institution,” citing 35 USC 314 and 316(a)(4). Again, the Notice states that “Congress gave the Director broad discretion to identify the circumstances when IPR proceedings would or would not benefit the patent system,” citing portions of H.R. Rep. No. 112-98.

However, neither the relevant statutes nor the legislative history authorize use of the Director’s discretion to override the statutory framework of the IPR system. Instead, the discretion that is provided to the Director should be understood in its rightful place as a part of the IPR system that Congress enacted.

With regard to 35 USC 314, the Director has discretion to deny institution of IPRs even when the threshold from 35 USC 314(a) is met. This discretion was meant, as discussed in the legislative history, to be considered in conjunction with 35 USC 316(a), to allow the Director to create a “safety valve” to “turn away some petitions” for IPRs, rather than having “a backlog of instituted reviews,” particularly if the initial numbers of requested IPRs overwhelmed the resources of the USPTO. See 157 Cong. Rec. S1377 (Mar. 8, 2011) (statement of Sen. Kyl).

Yes, it is true (as observed in the Notice) that 35 USC 316(a)(4) instructs that the USPTO’s regulations include “the relationship of [IPRs] to other proceedings under this title.” But this does not constitute a wide-ranging grant of discretion to the Director to regulate patent proceedings outside of the USPTO, such as civil litigation. That sort of broad discretion is provided to the Director regarding other proceedings within the USPTO (not including civil ligation outside the USPTO), “providing for stay, transfer, consolidation, or termination” of such matters, 35 USC 315(d). Instead, the authority given in 35 USC 316(a) was intended to provide the basis for converting the prior examinational inter partes reexamination proceeding to the then-new adjudicative inter partes review. See 157 Cong. Rec. S1375 (Mar. 8, 2011) (statement of Sen. Kyl). 

And further, the Director’s discretion with regard to rules affecting civil patent litigation is limited by the civil litigation provisions laid out in 35 USC 315(a), and the estoppel effects of IPRs established in 35 USC 315(e). (With regard to the latter, see generally Christa J. Laser, The Scope of IPR Estoppel: A Statutory, Historical, and Normative Analysis, 70 Fla. L. Rev. 1127 (2018).)  Where Congress has set forth clear regulations concerning the relationship between IPRs and civil patent litigation, the Director’s discretion should be considered circumscribed to rules that are in the same spirit as, and do not contradict, the relevant statutory law.

Over time the Director’s discretion has developed in case-by-case approaches that take into account various factors, such as the factors laid out in Apple v. Fintiv, IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential). Such factors can be augmented by bright-line rules regarding use of the Director’s discretion, such as set forth in Director Vidal’s June 2022 memorandum (“Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation”), since rescinded, which stated that an IPR would not be discretionarily denied when a petitioner makes a stipulation “not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition” (known as a “Sotero stipulation”). 

Turning now to certain of the proposed rules, it is our view that proposed rule 37 CFR 42.108(d) falls outside of the Director’s discretion, as informed by the discussion above. The failure to make a stipulation as forth in the proposed rule should not preclude a petitioner from having an IPR instituted or maintained. In addition, the proposed rule’s required stipulation involves an estoppel broader than what is set forth in 35 USC 315(e)(2), foreclosing a petition from raising any grounds of invalidity under 35 USC 102 and 103, regardless of whether those grounds could have been raised in the IPR.

Similarly, the provisions in proposed rule 37 CFR 42.108(e), barring IPRs when claims have been found valid in prior litigation, run contrary to the IPR framework set up by the America Invents Act (AIA). A finding of validity in a prior litigation should not close the door to IPRs even by non-parties to that prior litigation, at least where those non-parties are not in privity with parties in the litigation, especially when those non-parties are applying markedly different prior art, claim construction, and/or arguments than those made in the prior litigation. Again, the proposed rule goes beyond the bounds of the Director’s discretion in this area.

Thank you for your consideration of our views on this matter.