The October 17 Memo from Director Squires marked the end of a distinct discretionary denial era, the Interim Era. Per the memo, as of October 20, all institution decisions (discretionary, non-discretionary, and merits-based)...more
On October 29th, Acting Chief Judge Deshpande and Vice Chief Judge Kim discussed Director institution of AIA trials, where the Director will make all institution decisions (on both discretionary, non-discretionary, and...more
10/30/2025
/ Administrative Patent Judges ,
America Invents Act ,
Director of the USPTO ,
Discretionary Functions ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Statutory Interpretation ,
Statutory Requirements ,
USPTO
Since the inception of the bifurcated review process at the PTAB, Jones Day has been analyzing every discretionary decision released by the Office. Deputy Director Coke Morgan Stewart continues to be the key decisionmaker...more
In a Director Review, the Acting Director reversed a panel decision to discretionarily deny an IPR under § 325(d). The Acting Director held that the PTAB’s own findings in two previous IPRs sufficiently proved Examiner error...more
9/12/2025
/ Abuse of Discretion ,
Appeals ,
Fashion Industry ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Nike ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Prosecution History ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Remand ,
Sketchers ,
Statutory Interpretation ,
USPTO
For the first time under the bifurcated institution procedures, the Acting Director reversed her own prior discretionary denial, citing changed circumstances based on a settlement in the parallel district court litigation. ...more
9/3/2025
/ Denial of Institution ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Parallel Proceedings ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Settlement ,
USPTO
Under a new U.S. Patent and Trademark Office ("USPTO") policy issued in March 2025, pre-institution inter partes review ("IPR") proceedings are now bifurcated, consisting of a first phase in which the director considers...more
6/25/2025
/ Hatch-Waxman ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Orange Book ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
USPTO
On appeal from an inter partes review (“IPR”), the Federal Circuit held that, under pre-America Invents Act (“pre-AIA”) law, a published patent application is prior art as of its filing date as opposed to its later date of...more
In a 2-1 decision, the Patent Trial and Appeal Board (“PTAB”) denied a patent owner’s motion to file two new declarations in connection with its sur-reply, holding that the patent owner failed to prove the extraordinary...more
The Patent Trial and Appeal Board (“PTAB”) denied institution in an inter partes review (“IPR”), finding that an online store’s assertion regarding when a product was “first available” is by itself insufficient evidence of...more
On October 18, 2024, the USPTO’s final rule regarding Motion to Amend (“MTA”) practice and procedures in trial proceedings under the America Invents Act became effective. The rule makes permanent several MTA pilot program...more