Key Takeaways from Session 9: Navigating the New PTAB Playing Field

The Patent Trial and Appeal Board (PTAB) is operating in a fundamentally different environment than it was last year. In the latest installment of Sterne Kessler’s Navigating the New PTAB Playing Field webinar series, Richard Bemben, Melissa Haapala, and William Milliken provided an update on the data and decisions defining this new landscape — from a sharp drop in petition filings and institution rates to an expanding Director Review program, a narrowing path for inter partes review (IPR) estoppel, and a surge in ex parte reexamination filings. Together, these developments paint a picture of a PTAB that is more selective and more centralized around the Director’s policy priorities.

1. Petition Filings and Institution Rates Have Hit Historic Lows

IPR and post-grant review (PGR) filings are on pace for roughly 400 in 2026, down from a historical range of 1,400 – 1,800, while the overall institution rate has fallen to about 30% — well below the 60% to 70% range that prevailed for most of the past decade.

2. Discretionary Denial Remains a Holistic, Fact-Specific Analysis

Recent decisions in Ford v. AutoConnect and Westinghouse v. Railware confirm that there is no bright-line rule for inconsistent claim construction or conditional stipulations. Director Squires weighs these factors alongside other considerations, such as office error and U.S. manufacturing evidence, using a “holistic” approach. Parties on both sides should pay careful attention to the Director’s policy guidance and align arguments accordingly.

3. The Federal Circuit Is Insulating Institution-Related Decisions from Appeal

Following FedEx v. Qualcomm and a related certiorari denial, it appears settled that RPI determinations and Sotera stipulation disputes are effectively unreviewable under § 314(d), concentrating significant authority in the Director and the PTAB.

4. IPR Estoppel Under § 315(e) Is Narrowing — Creating Potential Overlap With District Court

A nuanced skilled-searcher standard, a burden of proof on the party asserting estoppel, and a bar on hindsight-driven searches are making estoppel harder to establish, even as the USPTO works to minimize overlap between PTAB and district court proceedings.

5. Reexamination On the Rise, But Repackaging Denied IPR Grounds Is Not a Reliable Strategy

Ex parte reexamination requests are increasing, but the Central Reexamination Unit has denied some reexamination requests under § 325(d) when they substantially overlap with IPR petitions that were denied institution for discretion or merits reasons.