The institution rate for post-grant petitions in FY 2026 through the end of November (the period from Oct. 1, 2025 through November 30, 2025) stands at 37% (118 instituted, 197 denied). As expected, this rate is...more
1/16/2026
/ America Invents Act ,
Denial of Institution ,
Intellectual Property Litigation ,
Inter Partes Review (IPR) Proceeding ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Pharmaceutical Industry ,
Post-Grant Review ,
Technology Sector ,
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
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
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
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
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
In a recent decision, the Patent Trial and Appeals Board (“PTAB”) exercised its discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review (“IPR”) after applying the Fintiv factors, despite Petitioner’s...more
7/16/2025
/ Denial of Institution ,
Generic Drugs ,
Gilead Sciences ,
Hatch-Waxman ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Life Sciences ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
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
7/8/2025
/ Hatch-Waxman ,
Intellectual Property Litigation ,
Inter Partes Review (IPR) Proceeding ,
National Security ,
Orange Book ,
Patent Applications ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Post-Grant Review ,
USPTO
A Delegated Rehearing Panel (“DRP”) recently modified the PTAB’s construction of the claim term “workload” and remanded, giving Mercedes-Benz USA, LLC (“Petitioner”) another opportunity to challenge a processor patent....more
6/27/2025
/ Appeals ,
Claim Construction ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Judicial Authority ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
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
The PTAB has published its monthly statistics wrap up for April 2025. As expected, those statistics show a significant decline in the institution rate compared to the first six months of the fiscal year. In those first six...more
6/9/2025
/ Appeals ,
Government Agencies ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Regulatory Agencies ,
USPTO