Stakeholders Spar over USPTO Proposal to Limit AIA Reviews
On October 17, the USPTO published a Notice of Proposed Rulemaking (NPRM) that would place significant new limits on America Invents Act (AIA) reviews, barring institution unless petitioners stipulate not to raise invalidity challenges under Section 102 or 103 in parallel litigation, where the parallel forum would likely address validity on that basis before the Patent Trial and Appeal Board (PTAB) issues its final written decision, or where the patent’s validity has already been upheld by another forum. Public comments submitted by the December 2 deadline included feedback from a number of notable petitioner-defendants, licensors, NPEs, and other entities engaged in patent monetization. Meanwhile, the USPTO also received a letter in support of its proposal from some of the cosponsors of a PTAB reform bill before Congress—and a competing letter opposing the proposal from former legislators that either voted for the AIA or have since supported it.
The October 2025 NPRM, which seeks to implement the proposed rules noted above (and covered further below) through a revision to the PTAB’s rules of practice, details a series of policy rationales that underpin the USPTO’s proposed changes. In part, the USPTO argues that IPRs have ceased to be a true “alternative” to district court litigation as contemplated by Congress for the AIA. The agency further highlights the practice of “serial or parallel” IPRs, asserting that this can be “wasteful” by forcing the relitigation of validity issues already considered, or being considered in parallel, by the USPTO, district courts, and the International Trade Commission (ITC).
On that point, the USPTO argues that even a “reliable” patent—defined elsewhere in the proposal as one that gives the inventor or others enough confidence to “invest in the patented technology”—becomes unreliable when subjected to repeated challenges. Such repeated challenges have increased at the PTAB, the agency explains, despite Board precedent designed to address those “risks”—including General Plastic v. Canon and Valve v. Electronic Scripting Products, which lay out factors under which multiple petitions from the same petitioner can be discretionarily denied; Comcast v. Rovi Guides, dealing with parallel petitions; Apple v. Fintiv, dealing with the impact of parallel litigation; and Advanced Bionics v. Med-El, dealing with prior art or arguments previously considered by the USPTO. Further compounding the “repeat challenges” problem, according to the USPTO, is the fact that petitioners sued for infringement in a district court or at the ITC tend to contest patent validity in that forum as well, sometimes bringing “repetitive challenges based on slightly rebranded evidence” (citation omitted).
The USPTO originally gave 30 days for public comment on its proposal, but extended the deadline for an additional 15 days, to December 2, after getting pushback on the relatively short length of the comment period from various industry stakeholders. The agency ultimately received nearly 11.5K comments, including 2.3K that have been published on the Federal Register website as of the date of this report.
Feedback from Both Sides of the “V.”
Among the stakeholders that published comments were a variety of frequent petitioner-defendants, many of which were staunchly opposed to the NPRM and some of which offered suggested revisions. Commenting in support, either in full or in part, were some operating companies with significant patent licensing businesses as well as certain NPEs and entities otherwise engaged in patent monetization.
Some of the most notable feedback from those stakeholders is detailed below.
– Stipulation Requirement
One of the NPRM’s most hotly debated proposals establishes that the PTAB would not institute trial where the petitioner “intends to pursue invalidity challenges under §§ 102 or 103 in other venues, such as district court or the U.S. International Trade Commission (ITC)”, which would be enforced via a requirement that the petitioner file a stipulation to that effect in the other venue.
Many of the commenters opposing this proposal argue that the provision improperly exceeds the statutory estoppel provided in the AIA and thus contradicts Congressional intent on that issue. Apple, for example, explains that by defining estoppel in that statute as encompassing grounds that the petitioner “raised or reasonably could have raised” in its IPR petition, Congress “chose not to extend estoppel to all 35 U.S.C. § 102 and § 103 arguments”. In contrast, these broader stipulations would, as noted by Apple, encompass “system art, public uses, and on-sale activity along with printed publications”, which the company asserts “will undercut the ability of parties to meaningfully investigate art besides printed publications” by further truncating the already-narrow window of time that the Fintiv rule allows to file an IPR (since, under Fintiv, petitioners must file as early as possible to avoid discretionary denial, in particular to avoid conflict with scheduled district court trials). Apple contends that petitioners would likely be forced to forgo those arguments as a result—requiring them to make “a prejudicial sacrifice just to use the proceeding that Congress created”.
Cisco also expresses the view that in addition to violating the AIA, “imposing such a requirement is an arbitrary and capricious action in violation of the [Administrative Procedure Act (APA)]” (internal citation omitted). Canon further asserts that the stipulation requirement goes beyond regulating “the conduct of proceedings in the Office” (the statutorily defined scope of the director’s regulatory authority) and “instead alters the scope of defenses available in Article III courts and the ITC”.
Amazon additionally highlights the fact that the required stipulation would cover not just the petitioned claims, but all claims in the challenged patent. This rule, the company asserts, “could incentivize gamesmanship by patent owners—for example, by changing asserted claims in litigation mid-stream after an IPR is filed and a stipulation given”. Amazon also posits that this rule could “encourage patent owners to seek omnibus patents with voluminous claims—patents that would be all but impossible to challenge in IPR when they are asserted in court”. Moreover, Roku asserts that by “requiring petitioners to commit to venue-exclusive invalidity strategies [through such stipulations,] the proposal risks chilling valuable settlement, licensing, and portfolio management negotiations”.
Meanwhile, semiconductor company GlobalFoundries expressed support for PTAB practices prior to the changes made starting in March 2025 (which have included a series of changes to the institution process and various decisions that have expanded the use of discretionary denials), but made a series of recommendations to improve each of the proposed factors if the NPRM were to be implemented. For the stipulation requirement, the company argued that this rule should be limited to just prior art patents, printed publications, and “any prior art system that is in all material respects described in or substantially the same as any prior art raised in the IPR”; that the rule should also be limited to the petitioned claims only (“consistent with estoppel under 35 U.S.C. § 315”), and that the stipulation should expire if the IPR is later terminated after institution but before a final merits decision.
Commenters weighing in favor of the NPRM, in contrast, have characterized the stipulation requirement as helping to fulfill Congress’s intent for AIA reviews to serve as a true “alternative” to district court litigation. For instance, publicly traded Adeia, Inc., the entity formed from the separation of Xperi’s product and IP licensing businesses in 2022, has argued that this provision fulfills that intent by addressing the “problem of multiple, serial, and parallel IPR petitions”—later highlighting what it deemed the multiplication of proceedings that results when IPRs are filed against patents with district court and/or ITC validity challenges, where they are merely “stacked on top of the other challenges” rather than being dismissed or waived.
Netlist, for its part, argues that this rule “appropriately would end the ‘multiple-bites-at-the-apple” dynamic where an accused infringer brings parallel and duplicative challenges in the PTAB and in the district court or ITC”. Additionally, Glocom, Inc. subsidiary SIPCO LLC argues that a “clear, uniform stipulation rule will deter parallel gamesmanship, concentrate overlapping disputes in one forum, and conserve the resources of the Office, the courts, and the parties”.
– Prior Determinations of Validity
The NPRM also proposes to bar institution for claims that have already received “adequate scrutiny” under Sections 102 or 103, including independent claims found not invalid on that basis by a district court, the ITC, or USPTO (in post-grant review or reexamination), or where the Federal Circuit has reversed a prior decision of invalidity or unpatentability, as well as “dependent claims where the independent claim on which each depends has already received scrutiny”.
Commenters opposing the NPRM were particularly critical of this proposal. Apple argues against this “one and done” approach (a term also used by Canon), which it asserts would override the judgment of Congress as to when parallel litigation should preclude institution: The statute (35 U.S.C. § 315(a)(1)) more “narrowly” provides that institution may not occur when a “petitioner or real party in interest” (RPI) challenges the patent’s validity in district court, while Section 315(b) bars an IPR when a petitioner, its RPI, or privy is served with an infringement complaint. The NPRM, Apple contends, unduly and “significantly expands” the circumstances when an IPR would be barred: “Patent defendants would be estopped by the shortcomings of arguments raised by other parties with which they have no connection, depriving those defendants of IPRs’ efficiencies”. HP Enterprise and subsidiary Juniper Networks add that “Congress did not create a per se prohibition on IPRs based on prior adjudications, let alone such adjudications involving unrelated entities”; while Honda argues that Congress already provided rules to “guard against duplicative challenges [and] did so narrowly[, in] Sections 315 and 325”. “If Congress intended a broader ‘once challenged, always barred’ rule, it would have said so”, Honda explains. Amazon similarly asserts that “Congress chose the specific circumstances in which a third party’s actions would preclude a party from filing a PTAB petition . . . In varying circumstances, a third party is either not bound at all, or is bound only when it is the ‘real party in interest’ or ‘privy’ of the prior petitioner or litigant”.
Apple further argues that this rule could encourage gamesmanship: Not only would it channel more validity disputes toward the less efficient route of district court litigation, Apple explains, it would also incentivize patent owners to first sue “smaller and less sophisticated parties that lack the means to mount meaningful validity challenges to the asserted patents, which would have the effect of depriving later litigants of the ability to pursue challenges through IPR”.
Moreover, Amazon rejects the USPTO’s assertion in the NPRM that when a patent’s validity is upheld, it has received “adequate scrutiny”—countering that “[i]t is frequently the case that the first party to be sued on a patent and to challenge its validity does not identify the most relevant prior art and its challenge fails” (emphasis in original). Amazon also argues that by making “a completely unrelated third party’s actions preclusive of a later defendant’s right to challenge an invalid patent at the PTAB”, the proposed rule “cannot be reconciled with constitutional principles of due process or the text of the Patent Act”.
Ciena, which characterizes this proposed limitation as “akin to a ‘first to file’ system for AIA patent challenges that Congress did not create”, further underscores how in its view this system would limit the ability of a supplier to file a post-grant proceeding when its customer is sued first. Mercedes-Benz points to a similar preclusive effect for automotive defendant OEMs that “are sued in the later wave of a litigation campaign”.
GlobalFoundries recommends a series of changes to this rule, arguing in part that if an “IPR is instituted but later terminated due to another tribunal’s decision”, such as by a summary judgment ruling of no invalidity, the petitioner should be able to withdraw the aforementioned stipulation if that judgment were later overturned on appeal (as the petitioner would otherwise be time barred at that point). The company further contends that the “preclusive effect of a prior validity or patentability determination should apply only to the party, RPI, or privy of the party in the previous proceeding”. GlobalFoundries additionally proposes that this “rule should be limited to such determinations that dispose of all challenges under 35 U.S.C. §§ 102 and 103 in the district court action, and that are essential to the final judgment in the case” (emphasis in original); and that the rule only apply for “ITC final determinations affirmed on appeal, not initial determinations”.
Meanwhile, supporters of this bar on institution for patents with prior validity determinations include Adeia, which argues that the rule furthers Congress’s intent through the AIA that patent owners “have ‘quiet title’ in their patent rights”: Following examination, and then “[a]fter a patent claim has then been subjected to and withstood a further validity challenge — whether in court, the ITC, or a prior PTAB proceeding — its validity should be settled, and no further IPR challenges should be allowed”. Adeia further rejects suggestions that this rule should not apply to ITC proceedings, and also asserts that the rule should even be extended to patents for which AIA review institution has previously been denied, or for which an ex parte reexam request from a third party has been rejected. Netlist also underscores the notion of quiet title: “This rule would provide patent owners with deserved finality when their inventions have already been subjected to review twice (once in examination and once after subsequent litigation) and found deserving of patent protection”.
Also among the licensors expressing support here (and for the NPRM overall) is DivX, LLC, a Fortress Investment Group LLC subsidiary that in an earlier iteration was known for developing the DivX line of video codecs. DivX argues that the NPRM’s changes should also be extended to ex parte reeexamination, which it contends has begun to see similar “abuses” to those occurring for IPR—including “attempts to create parallel validity proceedings” as well as serial petitions and alleged “obfuscat[ion]” of real party in interest requirements through third-party petitions. SIPCO, too, supports the extension of the post-validity decision bar to ex parte reexams.
– Parallel Litigation and Timing Considerations
The NPRM would also bar institution where a decision addressing invalidity under Sections 102 and 103 will likely occur in parallel litigation prior to the deadline for the Board’s final written decision—specifically, if (before that deadline) a district court were to hold a trial in which the petitioner “challenges the patent” under 102 or 103, or if the ITC were to issue an initial or final determination addressing validity on that basis.
Apple argues that by making time to trial “dispositive” rather than considering it as one of several factors as currently occurs under Fintiv, defendants sued in some venues would effectively lose the right to use IPR altogether. In particular, Apple points to data showing that East and West Texas together accounted for 47% of all patent litigation as recently as Q2 2025, the company contending that “[b]oth districts are known for regularly setting ambitious trial dates that under the proposed rules would prevent the institution and maintenance of IPR proceedings for defendants that happened to be sued in these districts”. Similarly, Roku argues that the rule “would eliminate IPRs when defendants are sued in the Eastern or Western Districts of Texas, where they are most often sued”; while Ford echoes those concerns over plaintiffs flocking to those two “rocket dockets” for the same reason.
Apple further states that this proposal contradicts the will of Congress, which established in the AIA (Section 315(b)) that defendants should have up to a year to decide whether to file an IPR (a point echoed by Cisco). “[N]umerous sound reasons” exist why the full year can be necessary, Apple explains—including the need for time to fully investigate the patent, and because defendants must wait for plaintiffs to serve infringement contentions and identify asserted claims.
Amazon emphasizes that throughout the history of post-grant review, “Congress has always understood that its purpose is to give questions of patent validity another forum, removed from the courts, where those questions would be answered by ‘an agency with expertise in both patent law and technology’”. This proposed rule flips this system on its head by prioritizing speed, which is a benefit but not a core policy rationale underpinning the AIA review system, Amazon argues: “Speed in resolving patent cases cannot have been Congress’s principal purpose in creating these proceedings—much less a sole purpose that overrides all other objectives, including the core objective of producing an accurate assessment of patent validity” (emphasis in original).
Netlist, in contrast, argues that this rule contemplating parallel litigation timing is “critical to avoid inconsistent decisions on the same issues among tribunals and to prevent gamesmanship”. The company explains that it “has seen PTAB activity used tactically to seek stays and postpone reckoning in court—even where the PTAB path later proved unnecessary or redundant”. SIPCO raises some of the same points, asserting that “withholding institution avoids duplicating adjudication, eliminates unnecessary stays, and allows estoppel and finality to operate where it will do the most to resolve the dispute”.
– “Extraordinary Circumstances” Exception
Finally, the NPRM allows for institution despite the above restrictions under “extraordinary circumstances”, which it defines as including where a “prior challenge barring institution was initiated in bad faith” and “substantial” changes in a statute or Supreme Court precedent. Not considered “extraordinary circumstances” would be “new or additional prior art, new expert testimony, new caselaw (except as provided above) or new legal argument, or a prior challenger's failure to appeal.”
Opponents of the NPRM have generally viewed the provided exceptions as too narrow. Amazon, in particular, objects to the Supreme Court restriction—noting that changes to the Court’s patent precedent rarely occur, and arguing that limiting the exception to the Supreme Court “sidelin[es] the Federal Circuit”. While Amazon acknowledges that by including the “bad faith” challenge exception, the NPRM correctly identifies the potential for gamesmanship, it argues that the rule lacks guidance on how “bad faith” petitions are to be identified—further asserting that the exceptions should not exclude “failure to appeal”.
Canon, meanwhile, interprets the narrowness of the exception as showing that the NPRM’s rules are “intended to operate as structural limitations on access to IPR, not merely as flexible procedural guidelines”. Honda, moreover, argues that the exception offers “no meaningful safety valve”, in that “[e]ven newly discovered, compelling prior art would not qualify . . . Elevating this vague exception as the only off-ramp would all but guarantee that weak patents persist, unfairly burdening vehicle programs and component ecosystems”.
GlobalFoundries argues that the “extraordinary circumstances” exception should include parallel proceedings where an injunction or exclusion order has been sought; where the patent is owned or asserted by an NPE; where the patent is owned or asserted by a state-owned entity, or an entity that is or may become involved in matters of national security or foreign policy; or where the petition includes grounds based on prior art not considered by the USPTO during examination. The company also asserts that a “prior challenger’s failure to appeal”, which under the NPRM cannot be an extraordinary circumstance, such a failure to appeal may warrant such an exception in some circumstances—such as “the failure to obtain a vacatur or reversal of a finding of no invalidity can sometimes be exceptional, such as where the Federal Circuit chooses to address only infringement, and not validity, on appeal”.
Supporters of the NPRM focused relatively less on the “extraordinary circumstances” exception, apart from generally arguing that the exception provides sufficient leeway with appropriate limits. Netlist, for instance, asserts that the rule permits the USPTO “to address genuine anomalies (for example, bad-faith blocking or major legal change) and preserves flexibility, while preventing routine exceptions from swallowing the rule”.
– Brief Statements in Support
Several notable patent holders and licensors offered more general, high-level comments in support of the NPRM.
Among them is the aforementioned Fortress, a global investment manager reporting $54B of assets under management as of September 30, 2025—entities linked to which have launched 60 litigation campaigns as of the date of this report. Fortress expresses support for the NPRM as a general matter, focusing primarily on the impact of the PTAB as a justification for the proposal’s changes: It argues that “abuse of the PTAB has deprived patent owners of the benefits of quiet title”, pointing to the Board’s “willingness to hear repeated challenges against the same patent” and its lower evidentiary standards relative to district court. The proposed rules, Fortress contends, “represent a healthy return to the basic principles of patent law and the original narrow intent of the [AIA]”, increasing certainty in patent rights while still permitting accused infringers “a fair opportunity to challenge a patent’s validity”.
Additionally, Nokia argues that the “proposed changes—particularly those aimed at reducing redundant proceedings and aligning PTAB reviews with parallel litigation—will help achieve [an effective and balanced IPR system in order to maintain confidence in patent rights]”. Centripetal Networks also states that it “strongly supports the NPRM’s core reforms”, asserting that those changes would ensure that IPR remains true to the “design of AIA trials as an alternative—not an addition—to district-court or ITC litigation, curbing serial and parallel challenges that disproportionately burden startups defending breakthrough technologies”. Centripetal also warns of national security and economic repercussions if the proposal is not adopted: “Weak, endlessly relitigated rights deter the capital and talent required to sustain U.S. cybersecurity leadership. Efficient infringement is not victimless—it slows deployment of superior defenses while rewarding free-riding at scale”.
Moreover, publicly traded InterDigital, Inc. frames the NPRM as helping to reduce wasted time and expense by “precluding duplicative litigation”. InterDigital argues in support of changes that would “[c]odify[] the concept of a single, meritorious challenge to a patent”, arguing that this “will help restore the balance between incentivizing innovation and promoting the public interest by providing patent holders with the prospect of quiet title”. By removing the possibility of multiple IPRs, InterDigital argues, this frees owners to commercialize or license their patents “without the shadow of serial IPRs hanging indefinitely overhead”. InterDigital also expressed support for a PTAB bill currently pending in Congress, as detailed further below.
– PREVAIL Act Consponsors Express Support; Former Legislators Oppose
Notably, as mentioned above, among the commenters were four cosponsors of the Promoting and Respecting Economically Vital American Innovation Leadership Act (PREVAIL Act), a bipartisan PTAB reform bill presently before Congress: Senator Chris Coons (D-DE), Senator Thom Tillis (R-NC), Representative Nathaniel Moran (R-TX), and Representative Deborah Ross (D-NC). In a letter jointly filed with the Federal Register page for the NPRM and addressed to Squires, the four legislators expressed their support for the NPRM—and urged him to support the PREVAIL Act. While they characterized the NPRM and PREVAIL Act as “tak[ing] slightly different approaches”, the cosponsors stated that both would:
Eliminate repetitive challenges by the same party on the same patents;
End duplicative challenges and parallel proceedings in multiple tribunals, requiring a party to choose whether to bring a challenge in the PTAB or another forum, like federal district court or the ITC; and
Reduce inconsistency between tribunals and improve efficiency by providing an inventor “quiet title” when a final judgment has been entered on the validity of a patent claim.
A legislative approach was important, they explained, because a “future USPTO Director may repeal or alter a PTAB regulation”, underscoring that Squires’s support for PREVAIL would help “to make permanent the type of PTAB reform the USPTO seeks to achieve with this NPRM”.
Additionally, another letter—this one opposing the NPRM—was filed by a group of former 14 members of Congress, notably including AIA cosponsor Senator Patrick Leaky (D-VT), that “either voted for [the AIA] while serving in Congress or have supported in the years since its passage”. Similar to other comments expressing opposition, the letter asserts that the USPTO Director lacks the authority for the proposed changes requiring broader stipulated estoppel and barring institution for patents with prior decisions upholding validity. The former legislators also argue that the proposed change calling for denial based on trial timing “is a nonstatutory barrier to PTAB access and violates the AIA’s intent”.
The commenters further take issue with certain “false assertions” made in the NPRM: While the USPTO certifies that the proposal will not have a “a significant economic impact on a substantial number of small entities”, they counter that “patent assertion entity mass litigation efforts against small entities are well documented”. They further assert that while the NPRM states that the rulemaking “has been determined not to be economically significant”, the proposal “[r]egrettably, if enacted, . . . will have a severe, negative economic impact”.
For more on the PREVAIL Act, see here. A more detailed breakdown of the October 2025 NPRM and other notable changes impacting the PTAB can be found at “PTAB Rule Revamp: Director Takes Over Institution; Proposal Restricts IPRs with Parallel 102/103 Challenges” (October 2025).
