USPTO Director John Squires recently issued another decision regarding discretionary denial of IPR petitions in Magnolia Medical Technologies, Inc. v. Kurin, Inc., IPR2026-00097, Paper 17 (Director May 14, 2026).  The decision adds to a string of recent decisions informing the likelihood of obtaining AIA review.

The Director began with a review of the legislative history of the America Invents Act (AIA) and noted that Congress intended AIA reviews for the purpose of narrowing patent disputes and not to “create another forum where litigation can be expanded.”  Reviewing historical data, however, the Director noted that AIA review has been used instead for harassment including multiple challenges to the same patent and assertions of inconsistent positions.  Instead of helping to protect small, U.S.-based manufacturers, the Director found that AIA review has been used largely by “market dominant companies” and also by foreign governments.  The Director further noted that public interest rather than private interests, are to be considered in promulgating rules related to AIA review, and commented: “In short, discretion is afforded to ensure fairness, efficiency, and predictability in patent disputes in a focused inter partes context—as Congress envisioned—as distinct from the broad adjudication of private disputes in district court litigation.”

Against this backdrop, the Director turned to the case at hand and concluded Magnolia’s petition was outside the purposes of AIA review because it was not an attempt “to use the Board as an alternative to litigation but instead is using the IPR process to obtain a second bite at the apple after losing in district court.”  The parties had expended “substantial resources” in the district court action on the same issues presented by Magnolia’s petition, which was filed after the district court precluded testimony from Magnolia’s expert on invalidity.  Thus, the Director denied the Petition noting that Magnolia had the opportunity to challenge the patent at the district court level and its attempt to use AIA review for “a second bite at the apple” was difficult to “square with Congress’s intent.”

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