Acting USPTO Director Coke Morgan Stewart has made a series of changes that have limited America Invents Act (AIA) reviews since assuming her role in January, including a new system for addressing requests for discretionary denial that in part considers the workload of the Patent Trial and Appeal Board (PTAB), a process that has led to a decrease in the overall institution rate. Now, the USPTO has imposed a new requirement at the final written decision stage, ordering PTAB panels to address all invalidity grounds—not just those that are dispositive.
In the early days of the AIA, the USPTO took a narrower view of which claims PTAB panels must assess in AIA review trials—allowing panels to institute trial on just a subset of the petitioned claims in a given proceeding. However, the US Supreme Court's 2018 opinion in SAS Institute v. Iancu barred the PTAB from issuing partial institution decisions, holding instead that the Board must institute trial for all claims challenged in a petition if that petition has established a reasonable likelihood of success as to at least one claim. The USPTO subsequently issued guidance that adopted a broad reading of SAS Institute, clarifying that the PTAB would institute trial as to all challenged claims and all invalidity grounds raised in the petition when such reasonable likelihood is established. The Federal Circuit later endorsed that more expansive practice (see, e.g., its January 2019 precedential decision in AC Technologies v. Amazon). Yet these limits did not restrict PTAB APJs at the final written decision stage, essentially giving an offramp that allowed panels to issue such final decisions that focused on dispositive issues.
A July 29, 2025 memorandum issued by PTAB Chief Administrative Patent Judge (APJ) Scott Boalick appears to have eliminated that offramp: Barring "extraordinary circumstances", the memo provides that for all AIA reviews in which an oral hearing has not taken place, all PTAB panels "will address all grounds raised in the petition in their final written decisions". Boalick frames this change as designed to promote more efficient decision-making and encourage more fulsome first-instance decisions: "Among other reasons, this approach will promote compact decision making and ensure that panels will not be required to address grounds for the first time in the event of a remand from a Director Review decision or Federal Circuit appeal".
As noted above, the new guidance comes after another notable set of changes at the PTAB earlier this year, when Acting Director Stewart revamped the Board's approach to discretionary denials of institution in AIA reviews. Under a new two-stage institution process created in the first quarter, the director first decides requests for discretionary denial before a panel then considers the merits of a petition. The director is to make that discretionary denial assessment based on an expanded set of factors—one of which allows such denials based on the PTAB's workload, including its ability to hit the statutory deadlines for AIA review trials. That factor is especially significant given the sweeping staffing changes enacted across the federal government by the administration of President Donald Trump, including a deferred resignation program and reduction-in-force (essentially, layoffs) that have already reportedly led the PTAB's complement of judges to shrink.
The PTAB's institution rate dropped significantly following the creation of the new discretionary denial process, falling from 75% in Q2 2024 to 51% in Q2 2025. It remains to be seen whether the July 29 guidance will cause a further increase in discretionary denials, given the potential workload implications of requiring PTAB panels to spend additional time to address all issues in a given proceeding.
See RPX's second-quarter review for more on the PTAB and other notable trends impacting patent litigation so far this year.
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