On November 17, 2025, USPTO Director John Squires issued a memorandum introducing a new procedure allowing petitioners to submit a voluntary Search Disclosure Declaration (SDD) that explains the petitioner’s search strategy...more
12/26/2025
/ Disclosure Requirements ,
Intellectual Property Litigation ,
Inter Partes Review (IPR) Proceeding ,
New Guidance ,
Patent Examinations ,
Patent Search ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Search Terms ,
USPTO
The USPTO’s Acting Deputy Director, Coke Morgan Stewart, issued a decision on October 3, 2025, declining to exercise discretion to deny institution in Carbyne, Inc. v. Tritech Software Systems, IPR2025-00959, Paper 11 (Oct. 3...more
12/19/2025
/ Denial of Institution ,
Inter Partes Review (IPR) Proceeding ,
Patent Invalidity ,
Patent Litigation ,
Patent Prosecution History ,
Patent Reissue Applications ,
Patent Trial and Appeal Board ,
Prior Art ,
Reissue Patents ,
Stays ,
USPTO
New guidance rescinds Biden-era guidance from February 2024 and signals a pro-patent, pro-AI landscape.
On November 28, 2025, the United States Patent and Trademark Office ("USPTO") published revised guidance on...more
12/8/2025
/ Artificial Intelligence ,
Biden Administration ,
Executive Orders ,
Intellectual Property Protection ,
Inventors ,
New Guidance ,
Patent Applications ,
Patent Examinations ,
Patents ,
Regulatory Reform ,
Trump Administration ,
USPTO
The Patent Trial and Appeal Board (PTAB) has designated as precedential a decision that squarely reaffirms the statutory requirement to identify all real parties in interest (RPI) in AIA petitions. By elevating Corning...more
12/1/2025
/ America Invents Act ,
Disclosure Requirements ,
Filing Requirements ,
Intellectual Property Litigation ,
Inter Partes Review (IPR) Proceeding ,
National Security ,
Patent Litigation ,
Patent Trial and Appeal Board ,
PTAB Precedential Opinion Panel (POP) ,
Regulatory Requirements ,
Statutory Interpretation ,
USPTO
In its recent decision in RØDE Microphones, LLC et. al. vs. Zaxcom, Inc., the PTAB declined to apply collateral estoppel based on prior post-grant proceedings because the prior proceedings had applied a different standard of...more
11/20/2025
/ Claim Construction ,
Collateral Estoppel ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Examinations ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
USPTO
On October 17, 2025, the USPTO issued a notice of proposed rulemaking (“Notice”) regarding the rules of practice for inter partes review before the PTAB. The proposed rules do not apply to post grant review petitions,...more
11/18/2025
/ Comment Period ,
Inter Partes Review (IPR) Proceeding ,
Notice of Proposed Rulemaking (NOPR) ,
Parallel Proceedings ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
Proposed Rules ,
Rulemaking Process ,
USPTO
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 31st, the Director issued his first set of summary decisions on IPR institutions, denying institution of 13 cases without comment in a single document....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
In a recent decision, Acting Director Coke Morgan Stewart granted Patent Owner’s request for discretionary denial in Sun Pharmaceuticals Industries Inc. v. Nivagen Pharmaceuticals, Inc., IPR2025-00893. While some factors...more
10/30/2025
/ Claim Construction ,
Denial of Institution ,
Healthcare ,
Inter Partes Review (IPR) Proceeding ,
Life Sciences ,
Parallel Proceedings ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
USPTO
On October 17, Director Squires announced that he will assume responsibility for all post‑grant trial institution decisions. When the Director determines that a petition warrants institution, the matter will be assigned to a...more
10/20/2025
/ Administrative Patent Judges ,
America Invents Act ,
Director of the USPTO ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Regulatory Reform ,
Statutory Interpretation ,
USPTO
On October 17th, the PTAB issued a Notice of Proposed Rulemaking regarding criteria for the Office to apply when making discretionary denial determinations....more
10/17/2025
/ Denial of Institution ,
Discretionary Functions ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
NPRM ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Prior Art ,
Proposed Rules ,
Rulemaking Process ,
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
The United States Patent and Trademark Office (USPTO) recently issued a memorandum addressing how the Patent Trial and Appeal Board (PTAB) should handle prior findings of fact and conclusions of law when adjudicating patent...more
More than a decade after the enactment of the America Invents Act (AIA), the Federal Circuit has issued its first opinion addressing an AIA derivation proceeding. In Global Health Solutions LLC v. Selner, the court clarified...more
9/26/2025
/ America Invents Act ,
Appeals ,
CAFC ,
Derivation Proceeding ,
Intellectual Property Protection ,
Interference Proceeding ,
Inventions ,
Inventors ,
Patent Applications ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents
Under Section 315(b), an IPR may be dismissed as time barred “if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is...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
The USPTO recently published a new webpage on the Interim Director Discretionary Process, which provides information regarding the bifurcated process for consideration of discretionary denial issues announced in the March 26,...more
On July 29, 2025, Chief Administrative Patent Judge Scott R. Boalick circulated a memorandum to Members of the PTAB entitled “Final Written Decision Procedures for AIA Trial Proceedings.” ...more
9/8/2025
/ Appeals ,
Final Written Decisions ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
New Guidance ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
USPTO
USPTO Acting Director Stewart sua sponte reconsidered and modified a previous Director Review decision that had affirmed cancellation of all 183 challenged claims as a sanction against patent owner Longhorn Vaccines. ...more
In a recent decision, Acting Director Coke Morgan Stewart denied a Patent Owner’s request for discretionary denial in LifeVac, LLC v. DCSTAR, Inc., IPR2025-00454. Even though Petitioner had previously challenged the same...more
8/11/2025
/ Denial of Institution ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Judicial Discretion ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
USPTO
On June 25, 2025, Acting Director Coke Stewart released an informative decision vacating institution of inter partes review (“IPR”) based on two petitions that were primarily filed to present two different constructions....more
8/6/2025
/ Claim Construction ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Trial Practice Guidance ,
USPTO ,
Vacated
The Patent Trial and Appeal Board (PTAB) denied institution of an inter partes review (IPR) brought by Par-Kan Company, LLC against Unverferth Manufacturing Company regarding U.S. Patent No. 8,967,940 (“the ‘940 patent”). ...more
7/28/2025
/ Evidence ,
Inter Partes Review (IPR) Proceeding ,
Inventions ,
Inventors ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Testimony ,
USPTO
As discretionary denials are on the rise and institution rates are declining at the PTAB (link), recent decisions from the PTAB have introduced the notion of a patent owner’s “settled expectations” as another reason for the...more
Coke Morgan Stewart, the acting director of the United States Patent and Trademark Office (“USPTO”), exercised discretion under 35 U.S.C. § 314(a) to deny Tessell’s (“Petitioner’s”) petition in favor of Nutanix (“Patent...more