Shifting standards under Director Squires now signal serious stakes for strategic petitioners who treat Sotera stipulations as tactical language rather than binding obligations.

On May 27, 2026, USPTO Director John Squires initiated a sua sponte Director Review in ASUSTeK v. Nokia (IPR2025-01153) to examine whether the petitioners violated a Sotera stipulation previously filed to secure institution.

The Sequence of Events

ASUS petitioned to challenge Nokia's H.264/H.265 video coding patent. Nokia sought discretionary denial under Fintiv, citing an advanced parallel ITC investigation (337-TA-1448) set for January 2026 trial, a prior ITC ruling upholding the claims on overlapping prior art, and licensing talks dating to 2017. To address those concerns, ASUS filed a Sotera stipulation—a commitment that, if review was instituted, ASUS would not raise in any other forum any ground raised or that reasonably could have been raised in the IPR.

The IPR was instituted on December 11, 2025, relying on the stipulation. Nokia later alleged ASUS raised the same invalidity theories in the parallel ITC case. The alleged breach occurred months after the 14-day Director Review window had closed, so Nokia's request was dismissed as untimely. Director Squires stepped in sua sponte, finding the allegations raise serious concerns given that Petitioners' briefing in the ITC investigation appears to raise the same invalidity theories argued in the IPR petition.

Briefing closed on June 2, 2026. Director Squires' decision on whether a violation occurred and the appropriate remedy remains pending while the IPR stays stayed. If a breach is found, one potential remedy is vacating the institution secured by the stipulation—handing Nokia the Fintiv denial originally sought.

Strategic Implications

  • A Sotera stipulation carries real teeth. The USPTO has shown willingness to reach back through sua sponte review to enforce stipulations even after the standard 14-day window closes.
  • Recent pattern under Director Squires: Magnolia Medical v. Kurin (second-bite denials) and Tianma v. LG Display (foreign sovereign petitioners barred) illustrate tactical levers at the PTAB being closed.
  • Companies in parallel proceedings should ensure IPR, ITC, and district court positions align. Cross-forum inconsistency remains an ongoing risk during and after institution.
  • Patent owners should document overlap carefully. An alleged violation of a stipulation in a parallel proceeding can now open a path to Director Review even outside the 14-day window.

Bottom Line

Filing a Sotera stipulation without robust internal processes to monitor and maintain compliance in parallel forums carries meaningful risk.