Takeaway: The USPTO is increasingly relying on discretionary denials, signaling that petitioners face steep hurdles when patents are older or tied to ongoing litigation, while challenges to newer patents remain the most viable path forward for inter-party reviews of patents at the USPTO.

The U.S. Patent and Trademark Office continues to lean heavily on discretionary denials, with Acting Director Coke Morgan Stewart and Deputy Chief Judge Kal Deshpande rejecting most petitions for review while sending only a limited number to the Patent Trial and Appeal Board. Stewart recently denied 54 petitions and referred 22, while Deshpande issued six denials and three referrals in the latest round.

Stewart did grant rehearing in Advanced Micro Devices’ challenge to a Concurrent Ventures patent after related litigation was stayed, reversing her earlier denial. But in most cases she has emphasized factors such as trial schedules, patent age, prior ownership, and settled expectations of patent owners. She denied petitions from DataDome against Arkose Labs’ anti-bot patents, Microsoft against Dialect voice-recognition patents, and Tessell against Nutanix patents invented by its own founders.

Deshpande expanded the settled expectations doctrine by rejecting Samsung’s challenges to GenghisComm patents, some issued as recently as 2022. Until now, the USPTO had only applied the doctrine to patents at least six years old, but Deshpande said ongoing Texas litigation made review inefficient even for newer patents.

Not all challenges failed. Stewart allowed MIM Software to proceed against a diagnostic imaging patent issued in 2024, where litigation has been stayed, and referred petitions involving Birchtech mercury removal patents in multidistrict litigation. Other recent referrals involved newly issued patents or cases where examiner error was identified.

The trend is clear: challenges to older patents or those already tied up in court face long odds, while newly issued patents and cases showing procedural flaws remain the most viable path to PTAB review.