Journal Articles

“Slides tell part of the story. They don't tell the whole story because there have been more recent changes.”  - Richard Bemben

With discretionary denial accounting for most denials in the panel's fiscal 2026 data, the practitioners on AIPLA's IPRs in Focus panel spent the session less on the merits of patentability than on the choices that come before them: whether to file at all, where to file, and how to keep positions consistent when the same claims are being litigated in more than one forum.

The session, held October 29 at the AIPLA 2026 Annual Meeting in Washington, D.C., featured moderator Frank L. Bernstein (Squire Patton Boggs), Richard Bemben (Sterne, Kessler, Goldstein & Fox), Brian Goldberg (Smurfit Westrock), and Michael Parsons (Wolf Greenfield). Bemben and Goldberg are former patent examiners; Goldberg offered the in-house perspective. Bernstein posed the hypotheticals that framed much of the discussion.

The Numbers Behind the Shift

Bemben opened with filing and institution data. In fall 2025, he noted, ex parte reexamination requests exceeded AIA petitions for what was probably the first time since the early days of IPRs, a change he attributed primarily to the Office's discretionary denial policies. The panel's slides put fiscal 2026 AIA petitions at 500, down from 1,433 in FY2025, and separately projected more than 1,000 reexamination requests for calendar 2026. The figures cover different reporting periods.

The slides reported a fiscal 2026 institution rate of 41 percent by petition. Bemben noted a summer rebound and offered more selective filing as one explanation, with parties deciding patent by patent whether to pursue an IPR or reexamination. Parsons described a break point at roughly six years, after which discretionary denials climb. That was a practical observation, not a legal cutoff.

Settled Expectations Turn on the Facts

Bernstein asked how the panel would advise a client sued on a nine-year-old patent that its owner had never asserted or licensed in the client's market. Goldberg said the Office measures patent age as of the discretionary decision, so “I would call the demarcation line really five and a half years.” At nine years, a petitioner would want other evidence and factors lined up in its favor.

Bemben said many clients still prefer IPR over ex parte reexamination because it lets the petitioner maintain control and have a say in the proceeding. He cited Ford Motor Co. v. AutoConnect Holdings LLC, IPR2025-01342, Paper 10 (Director Dec. 4, 2025), as an example favoring the petitioner's settled expectations. His advice was to investigate the patent's history and the parties' relationship. Institution was later vacated on a separate claim-construction issue, discussed below.

Goldberg referenced Apple Inc. v. Ferid Allani, IPR2025-00856, Paper 11, at 3–4 (Acting Director Sept. 5, 2025). Apple had told the owner that no license was needed, not the reverse. Apple then faced no assertion for eleven years, and the patents were asserted only after expiration. Considering the whole record, the Acting Director declined discretionary denial and referred the petitions to the Board, not a final institution ruling.

On licensing contact, Parsons said a petitioner's longer awareness of the patent and longer negotiations tend to weigh in favor of the patent owner. Goldberg added that licenses taken by other parties would likewise support the owner's expectations. The panelists did not identify an example in which a sale alone changed the analysis where the prior owner had been silent.

Reading Summary Notices

Goldberg cautioned that the panel's observations rested on limited information. Most discretionary denials, he said, have come from the Director personally, mostly as summary notices. He described them as “a list of cases with a thumbs up or thumbs down” and no opinion. Parsons said he is tracking cases and aligning the facts to infer what is driving outcomes. Bemben said his group goes directly to the briefing when an older patent survives and the notice does not explain why.

Consistency Across Forums

The discussion turned to petitioners who argue indefiniteness in district court while telling the PTAB that a skilled artisan would understand the claims. Bernstein highlighted the difficulty of reconciling those positions. The petition-content rule, 37 C.F.R. § 42.104(b)(3), requires identification of claim construction. In Revvo Technologies, Inc. v. Cerebrum Sensor Technologies, Inc., IPR2025-00632, Paper 20, at 3–6 (Director Nov. 3, 2025), the Director required sufficient justification for differing constructions. Simply adopting the owner's litigation construction was insufficient; differing positions are not categorically prohibited.

Parsons said in-house counsel must stay on top of what outside counsel is arguing in each forum. Goldberg wants litigation and IPR counsel communicating directly, or facilitates the exchange himself. Bemben described convening early “summits” with district court counsel to develop theories together. Claims invoking Section 112(f) present a particular difficulty: a petition must identify corresponding structure, material, or acts, while timing pressure can force filing before litigation positions are settled.

On stipulations, Parsons called the question case by case, and said that raising one in response to the patent owner's discretionary denial brief is “always a softer place to land” than raising it unprompted. Bernstein noted that late offers to forgo district court arguments had been rejected. Goldberg pointed to Director Squires’ warnings against a second bite of the apple. Bemben said inconsistent claim construction is a separate discretionary factor, and offers to drop a Section 112 argument have been held insufficient. In Ford Motor Co. v. AutoConnect Holdings LLC, the Director rejected a conditional withdrawal offered after the owner raised the inconsistency, vacated institution, and denied the petitions. That does not mean every withdrawal fails.

Forum Choice, Reexamination, and What Comes Next

On choosing a forum, Parsons said technical complexity is one factor, and that he would avoid district court juries for technically complex inventions. Goldberg said the decision is fact-based. The slides showed that 438 of 552 FY2026 denials, roughly 79 percent, came at the discretionary stage, so a weak discretionary case would weigh strongly against an IPR.

Bemben said refiling a discretionarily denied IPR as a reexamination request was once “a no-go,” but may now be possible depending on the trial schedule. Parsons questioned denying reexamination under 35 U.S.C. § 325(d) after an IPR denial without merits review. The statute permits rejection based on previously presented art or arguments; it does not require an earlier merits decision. The discussion also raised the difficulty of fitting an Administrative Procedure Act challenge into a litigation timeline.

Forecasts differed. Bemben pointed to positive developments, including proposals for returning merits decisions on institution to panels and a recent uptick in institution. Parsons expected more of the same for the next couple of years.

During audience questions, Bemben said the proposed “one-and-done” rules remained pending as of the discussion. Prior court or ITC claim constructions timely made of record must be considered, but are not automatically binding. 37 C.F.R. § 42.100(b). Goldberg said his company tends to use separate litigation and IPR firms, though efficiency or an expected early settlement sometimes justified one firm. Bemben said he hopes the return of merits decisions to panels will bring “fulsome institution decisions” that give parties guidance on the strength of their arguments.