Director Review Under the USPTO's Final Rule – Patents: Post-Grant Podcast
In 2025, the Patent Trial and Appeal Board (PTAB) experienced significant procedural and substantive changes. Under new leadership at the U.S. Patent and Trademark Office (USPTO), a series of developments reshaped...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, 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 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
USPTO Director Squires recently published an open letter announcing that he was “Bringing the USPTO Back to the Future” by assuming responsibility for all IPR and PGR institution decisions. Why the reference to the 1980s...more
The Director of the United States Patent and Trademark Office (USPTO) vacated a Patent Trial & Appeal Board decision instituting an inter partes review (IPR) proceeding after finding that the petitioner advanced inconsistent...more
We have written multiple pieces about the ongoing intellectual property dispute between The Pokémon Company / Nintendo (collectively “Nintendo”) and PocketPair (makers of the 2024 smash hit video game Palworld)....more
For most of 2025, the trend in Patent Trial and Appeal Board (PTAB) practice has been unmistakable: institution of Inter Partes Reviews (IPRs) and Post-Grant Reviews (PGRs) has become harder....more
In an Inter Partes Review (IPR), Petitioners have long been told to avoid relying on prior art the examiner already “considered,” for fear of triggering a discretionary denial under 35 U.S.C. § 325(d)....more
On November 6, the Federal Circuit in In re Motorola Solutions, Inc. denied Motorola’s request for mandamus and held that the USPTO Director’s decisions denying or de-instituting inter partes review (IPR) are unreviewable...more
On October 1, 2025, USPTO Director John Squires issued his first Director Review decision, terminating in whole IPR2024-00465 (“IPR465”) based on unreliable and inconsistent expert testimony. In IPR465, Interactive...more
On November 6, 2025, the U.S. Court of Appeals for the Federal Circuit (Judges Dyk, Linn, Cunningham, and/or Stoll) issued orders denying three petitions for mandamus (out of seven currently pending) challenging then-Acting...more
Petitioners challenging patents in IPR procedures may use various strategies to improve the likelihood of avoiding discretionary denial. One such strategy is to identify a material error. In this alert, we explore several...more
Are you planning on challenging a competitor’s patent at the US Patent and Trademark Office (USPTO)? The policies of the new director of the USPTO may cause you to rethink your strategy. The USPTO has recently proposed a new...more
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 29, 2025, members of the Patent Trial and Appeal Board (PTAB) presented a “USPTO Hour” session as a follow-up to a recent memorandum entitled “Director Institution of AIA Trial Proceedings” issued by USPTO Director...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
On October 17, 2025, the Acting Director of the US Patent and Trademark Office (USPTO) published a letter and memorandum reinvigorating Director authority over the institution of inter partes review (IPR) and post-grant...more
The US Patent and Trademark Office (USPTO) has announced two major, interrelated policy shifts: (1) proposed amendments that would limit the institution of inter partes review (IPR) proceedings in cases where validity has...more
On September 4, 2025, the USPTO’s Acting Director declined H2 Intellect LLC’s request for discretionary denial of an IPR petition filed by Home Depot U.S.A., Inc. Central to the decision was the PTAB’s analysis of “settled...more
On October 17, 2025, John Squires, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO), issued a significant memorandum with subject line “Director...more
On Friday, October 17, the USPTO published a proposed rule that, if implemented, would likely reduce filings of inter partes review patent validity challenges. In addition, USPTO Director John Squires announced, in an open...more
In what some are perceiving as the second blow of a one-two punch against patent trial proceedings conducted at the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB), USPTO Director Squires...more