Key Takeaway: In a precedential decision in Magnolia Medical Technologies, Inc. v. Kurin, Inc., USPTO Director Squires denied IPR institution and reinforced the policy framework for discretionary denial at the PTAB, signaling a policy of using discretionary denial to allow the PTAB to serve as an alternative to, not an expansion of, district court patent litigation.
On May 14, 2026, U.S. Patent and Trademark Office Director John Squires issued a precedential decision setting forth his policy rationale for the Director’s discretion to institute or deny inter partes review (IPR) and post-grant review (PGR) patent validity challenges before the Patent Trial and Appeal Board (PTAB). In his decision in Magnolia Medical Technologies, Inc. v. Kurin, Inc., Squires asserts the Director should exercise that discretion to ensure PTAB challenges are a quick and cost-effective alternative to district court litigation. He further asserts previous misuse of the PTAB had expanded, rather than reduced, patent litigation.
Squires posits that PTAB challenges should be focused on the public interest, correcting the improvident granting of patents. He argues that PTAB challenges should not focus on the narrow interests of private litigants, explaining that private litigants have a right to raise all patent validity challenges in district court.
In view of these principles, Squires indicates the USPTO will continue to provide guidance about, and continue to apply previously outlined, discretionary-denial considerations. The Magnolia decision specifically mentions several previously established factors related to the filing of multiple petitions, parallel litigation, favoring of domestic over foreign entities, examiner error, inconsistent claim construction positions, and settled expectations. Applying these factors to the facts of the specific IPR petition at issue, Squires denied institution because the petitioner had already litigated similar patent validity grounds in district court and lost.
While not breaking significant new ground, the precedential Magnolia decision solidifies Squires’s discretionary-denial policies. Patent owners and petitioners can expect current pro-patent PTAB trends to continue. In their discretionary-denial arguments, patent owners and petitioners should squarely address the overarching public-interest and alternative-to-litigation concerns set forth in Magnolia. For example, a petitioner may show (and a patent owner may rebut) that an examination error occurred that would be in the public interest for the PTAB to correct and that the petition presents unique validity challenges that will not be addressed in district court.
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