USPTO Proposes New Rules to Limit Multiple Validity Challenges — Patents: Post-Grant Podcast
Discretionary Denials at the PTAB: What to Expect? - Patents: Post-Grant Podcast
Jones Day Talks®: Patent Litigation, PTAB, Iancu's Legacy, and Institution Discretion
Key Takeaways - The USPTO has formally expanded its discretionary framework. As of March 11, the Director will consider U.S. manufacturing footprint and small business status when deciding whether to institute IPR and PGR...more
On March 11, 2026, the USPTO issued a new Director Memorandum introducing additional factors the Director will consider when deciding whether to institute inter partes review (“IPR”) and post‑grant review (“PGR”) proceedings....more
USPTO institution decisions are no longer just about prior art. Over the past year, the Director has steadily expanded discretionary institution analysis to account for broader policy considerations, and the latest change...more
In two related cases involving Generac Power Systems, Inc. as Petitioner and Champion Power Equipment, Inc. as Patent Owner, Director Squires initiated sua sponte Director Review of the Board’s Decisions to grant institution...more
The USPTO Director denied a patent owner’s request for discretionary denial of two inter partes review (IPR) petitions, citing the petitioner’s “well-settled expectation” that it would not be accused of infringing the two...more
The US Court of Appeals for the Federal Circuit concluded that the United States Patent and Trademark Office’s (USPTO) framework for discretionary denials of inter partes review (IPR) is a general statement of policy, not a...more
On Friday the 13th, the U.S. Court of Appeals for the Federal Circuit issued its decision in Apple Inc. v. Squires, which turned into a Nightmare on Madison Place for Apple’s chances to challenge the use of (now obsolete)...more
The PTAB’s recently designated precedential decision in Realtek Semiconductor Corp., v. ParkerVision, Inc., Nos. IPR2025-00324 and IPR2025-00325, Paper No. 11 (June 25, 2025), makes clear that an otherwise time-barred...more
USPTO Director John Squires issued a decision on October 3, 2025, denying a request to discretionarily deny institution in Caption Health, Inc. v. The University of British Columbia, IPR2025-01422, Paper 15 at 3 (Dec. 18,...more
The United States Patent and Trademark Office (USPTO) designated four decisions as precedential and nine decisions as informative, all highlighting the factors the USPTO will consider in determining whether to deny a petition...more
On January 9, 2026, USPTO Director John A. Squires designated four recent discretionary-denial rulings as precedential and nine more as informative, formalizing a developing framework for how and when the Office will exercise...more
Our Patent Case Summaries provide a weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial...more
The Patent Trial and Appeal Board (PTAB) recently designated a post-grant review (PGR) decision as precedential. In the decision, the Director issued a discretionary denial decision confirming that the proper analysis was a...more
This Post Grant Pulse provides updates on recent institution statistics, what to look out for in key discretionary factors, and other strategies to consider. ...more
Following up on our 2024 Trial Statistics Trends at the PTAB, this blog post expands on the statistics and trends at the PTAB for the Fiscal Year 2025 (“FY25”), which runs from October 1, 2024 through September 30, 2025....more
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
On January 9, 2026, the USPTO designated four decisions as precedential and nine decisions as informative. And soon after, on January 12, 2026, the USPTO designated one more decision as precedential and another as...more
The US Court of Appeals for the Federal Circuit affirmed three Patent Trial & Appeal Board final written decisions finding claims of three related patents unpatentable as obvious and reiterated that challenges to the Board’s...more
The PTO Director has unreviewable discretion to deny institution of IPR proceedings in view of parallel proceedings, even when the petitioner executes a Sotera stipulation....more
The Patent Trial and Appeal Board (PTAB) has experienced significant shifts in discretionary-denial policy over the last year. Under Acting Director Coke Morgan Stewart, PTAB expanded the bases for discretionary denial and...more
The US Court of Appeals for the Federal Circuit denied mandamus relief to three petitioners after the United States Patent and Trademark Office (USPTO) denied inter partes review (IPR) institution....more
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
On November 6, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued a decision denying a petition for writ of mandamus relief from the discretionary deinstitution of inter partes reviews (“IPRs”). In re...more
Kilpatrick’s Justin Krieger and Nicki Kennedy recently presented to an audience of other thought leaders on the topic of “Discretionary Denials in IPRs: New Framework, Navigating the Evolving Landscape, Strategies for...more