USPTO policy shift on patent reviews sparks Federal Circuit fight

The interim director of the U.S. Patent and Trademark Office has dramatically changed the way patents can be challenged under inter partes review by third parties, which critics say has tilted the system dramatically in favor of patent owners.

Interim Director Coke Morgan Stewart, who was succeeded last week by John Squires, a nominee of President Donald Trump who was confirmed by the U.S. Senate, shifted the policy allowing challenges under the America Invents Act, a 2011 patent law.

Stanford Law School professor Mark A. Lemley, writing on behalf of intellectual property law professors across the country, is asking a federal appellate court to reverse it, saying Stewart's policy to reject challenges because they would upset the "settled expectations" of patent owners violates the statute.

His amicus curiae brief concerns one of five challenges to Stewart's policy, which overturned guidance by former patent office director Kathi Vidal, who served under the Biden administration and is now a partner at Winston & Strawn LLP's Redwood City office.

Lemley said in an email Wednesday that he hopes the new director, a former partner with Dilworth Paxson LLP, will change Stewart's policy.

Lemley and 23 other law professors, along with two other amicus briefs, are challenging Stewart's policy at the U.S. Court of Appeals for the Federal Circuit, seeking a writ of mandamus. In re: SanDisk Technologies Inc., 25-152 (Fed. Circ., filed Sept. 18, 2025).

Attorneys with Haynes and Boone LLP, who represent Milpitas-based SanDisk and San Jose-based Western Digital Technologies Inc., filed a writ of mandamus in the case on Sept. 18.

"The interim Director of the PTO has rejected hundreds of meritorious [inter partes review] petitions in the last eight months," Lemley wrote in the amicus brief. "Those rejections are based on a policy of protecting the 'settled expectations' of patent owners that their patents will not be invalidated when those patents have been in force as little as two years."

"That policy violates the statute and contravenes the policies that underly the [inter partes review] proceeding," he added. "This case, and hundreds more like it, reflect not the exercise of judgment and discretion as to the merits of the case before the interim Director or the need to make efficient use of PTO resources, but instead her expressed hostility to the entire project of IPRs."

Attorneys with Mintz, Levin, Cohn, Ferris, Glovsky and Popeo PC wrote on the firm's website last month that patent owners, especially in technology, "are experiencing an environment that is increasingly in their favor."

Of inter partes petitions filed since Oct. 1, 2024, "72% have been denied while IPR petitions filed between January and August of that same year enjoyed a 61% institution rate, highlighting a dramatic shift that has effectively turned traditional IPR institution expectations on their head," the Mintz lawyers wrote.

Daniel F. Olejko, a partner with Bragalone Olejko Saad PC who represents Acacia Research Group LLC, wrote in a brief in another case pending before the Federal Circuit that Stewart's policy makes sense. In re: Motorola Solutions Inc., 25-134 (Fed. Circ., filed June 23, 2025).

He wrote that "limiting the Acting Director's broad discretion over IPRs in favor of the regime demanded by Motorola [Solutions Inc.] would constrain the USPTO Acting Director's discretion in a way that will trap patents in years of seriatim validity challenges, creating an inefficient patent system in tension with the stated goals of the America Invents Act."

Stewart, in a speech this month, compared inter partes review of patents to having an individual's law license, college degree or the title to their home subject to "constant reconsideration" at any time, according to Lemley's brief.

"To have a stable economy, we need a stable patent system," she said. "Repeated and expedited reconsideration of patent grants under the low preponderance of evidence standard is the antithesis of stability."

Lemley, who is also a partner at Lex Lumina LLP, countered in Monday's brief that most patents are granted routinely and only become an issue if their validity is questioned later.

"A patent owner should not have 'settled expectations' that a patent they obtained only a few years before can never be challenged," he wrote. "The entire system is set up with the idea that if and when the patentee asserts the patent, its validity can be evaluated in detail."

Michelle Aspen, senior patent counsel with Unified Patents LLC - which tries to prevent non-practicing entities from getting settlements in infringement lawsuits and filed an amicus brief of its own - expressed dismay at the new rules.

"We are hearing from hundreds of industry members who feel like the rug has been pulled out from under them," she wrote in an email. "The office has denied the vast majority of meritorious petitions filed based on retroactive changes, but kept their filing fees."