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Intellectual Property Litigation Patents United States Patent and Trademark Office

Jones Day

Acting Director Denies IPR Institution Based on “Settled Expectations”

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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

Haug Partners LLP

Settled Expectations: How the PTAB’s New Discretionary Denial Framework Is Reshaping IPR Strategy

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In a recent article, Haug Partners previewed that the impact of the Patent Trial and Appeal Board’s (PTAB) new bifurcated approach to discretionary denial requests would depend on how the new Acting USPTO Director, Coke...more

McDermott Will & Emery

Seeing double? Director instructs Board to resolve claim construction pre-institution

The acting director of the US Patent & Trademark Office (PTO) vacated and remanded a Patent Trial & Appeal Board decision to institute two inter partes review (IPR) petitions that challenged the same claims. The acting...more

McDonnell Boehnen Hulbert & Berghoff LLP

Government Files Statement in Support of Preliminary Injunction Motion in Radian Memory Systems v. Samsung Electronics

Almost two decades ago, the Supreme Court handed down what has turned out to be one of its most significant patent decisions of this century:  eBay v. MercExchange.  The eBay case has had the effect of precluding prevailing...more

Volpe Koenig

Intellectual Property in Popular Culture: When IP Goes “Pop”

Volpe Koenig on

Like other areas of law, intellectual property (IP) is often depicted as part of a plot point in popular culture, such as movies and television. In addition, lP is often mentioned in the mass media, particularly when any...more

Fenwick & West LLP

Reassessing Irreparable Harm: Are Injunctions Making a Comeback?

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In an unusual move, the U.S. Department of Justice and U.S. Patent and Trademark Office submitted a “Statement of Interest” this week in a pending patent case in the Eastern District of Texas—sharing “views” on whether...more

McDermott Will & Emery

Looks like estoppel, sounds like estoppel … but it’s just director discretion

McDermott Will & Emery on

The acting director of the US Patent & Trademark Office (PTO) granted a patent owner’s request for discretionary denial and denied institution of an inter partes review (IPR) proceeding, finding that the petitioner engaged in...more

Fish & Richardson

USPTO: No Bright-Line Rule on When Expectations Become Settled

Fish & Richardson on

On June 18, 2025, U.S. Patent and Trademark Office Acting Director Stewart issued a discretionary denial decision in Dabico Airport Solutions Inc. v. AXA Power ApS, granting the patent owner’s request for discretionary denial...more

Jones Day

USPTO Acting Director Denies IPR Institution Based on "Settled Expectations"

Jones Day on

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

ArentFox Schiff

USPTO Expands on ‘Settled Expectations’ as Basis for PTAB Discretionary Denials

ArentFox Schiff on

The US Patent and Trademark Office (USPTO) recently issued a Director Discretionary Denial decision expanding on the “settled expectations” ground for discretionary denial of a post-grant review proceeding...more

Vorys, Sater, Seymour and Pease LLP

New Settled Expectations Policy at the PTAB Augurs Major Practice Changes

In a startling development, Acting Director of the USPTO Coke Morgan Stewart has denied institution of an inter partes review (IPR) on the basis of “settled expectations,” on the sole ground that the subject patent had been...more

Vinson & Elkins LLP

File Early or Risk Denial: iRhythm IPR Institution Denial Underscores the Importance of Filing IPR Petitions Sooner Rather Than...

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On June 6, 2025, the Acting Director of the United States Patent and Trademark Office (“USPTO”), Coke Morgan Stewart, issued a decision denying institution of five inter partes review (“IPR”) petitions filed by iRhythm, Inc....more

Proskauer - The Patent Playbook

Discretionary Denials in Action: iRhythm Technologies Inc. v. Welch Allyn Inc.

The U.S. Patent and Trademark Office (“USPTO”) Acting Director’s recent decision to deny institution of inter partes review (“IPR”) in iRhythm Technologies Inc. v. Welch Allyn Inc. offers valuable lessons for both patent...more

Wilson Sonsini Goodrich & Rosati

Patent Office Denial of “Late” Inter Partes Review Petitions Changes Expectations

On June 6, 2025, the acting Director of the U.S. Patent and Trademark Office (USPTO), Coke Morgan Stewart, issued a decision in iRhythm Technologies v. Welch Allyn, Inc.1 that initiates a new basis for discretionary denial...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Latest Director Discretionary Denial Decision in iRhythm Provides Valuable Insights

On June 6, 2025, Acting USPTO Director Stewart issued a decision in iRhythm Tech. v. Welch Allyn, Inc., IPR2025-00363, Paper 10 (and four related IPRs), which granted Patent Owner’s request for discretionary denial. This is...more

WilmerHale

PTAB/USPTO Update - June 2025

WilmerHale on

On May 27, the USPTO announced the completion of a critical upgrade to the agency’s core financial system, Momentum, to streamline maintenance of the fee payment systems as well as several internal functions....more

McDermott Will & Emery

It’s a Matter of Timing: The PTO’s Latest Decisions on Discretionary Denials

McDermott Will & Emery on

Since the US Patent & Trademark Office’s (PTO) decision to rescind former Director Vidal’s memo on procedures for post-grant proceedings where there is parallel district court litigation, Current Acting Director Coke Morgan...more

A&O Shearman

Court Of Appeals For The Federal Circuit Holds That Conception Does Not Require Certainty of Success

A&O Shearman on

On May 12, 2025, the Court of Appeals for the Federal Circuit vacated-in-part and remanded a Patent Trial and Appeal Board (“PTAB”) decision in an interference proceeding concluding that the Broad Institute, Inc. (“Broad...more

Holland & Knight LLP

Section 101 Patent Eligibility Roundup: An Informative PTAB Decision, Squires Speaks

Holland & Knight LLP on

The Patent Trial and Appeal Board designated a recent decision as informative. In the decision, Coke Morgan Stewart, Acting Director of the U.S. Patent and Trade Office (USPTO), ended the petitioner's challenges, noting that...more

Foley Hoag LLP

A Super CRISPR Week – the Week of May 12, 2025: Patent Battles, Clinical Milestones, and Next-Gen Tools

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Key Takeaways: Federal Circuit Reopens CRISPR-Cas9 Priority Fight. The CAFC vacated the PTAB’s earlier ruling that UC lacked prior conception of CRISPR-Cas9 in eukaryotic cells, remanding the interference for reconsideration...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: The Regents of the University of California v. The Broad Institute

The Regents of the University of California v. The Broad Institute, Inc., Appeal Nos. 2022-1594, -1653 (Fed. Cir. May 12, 2025) Must an inventor know their invention will work to demonstrate that they “conceived” of it? ...more

Fish & Richardson

Acting USPTO Director Stewart Issues First Decisions Under Interim Discretionary Denial Process

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On Friday, May 16, the U.S. Patent and Trademark Office (USPTO) issued discretionary denial decisions in the first four matters considered under the USPTO’s new interim workload management process....more

Morrison & Foerster LLP

Federal Circuit Vacates and Remands in Long-Pending Dispute over CRISPR IP

Those hoping the Court of Appeals for the Federal Circuit would finally resolve priority in the long-pending dispute between the University of California and the Broad Institute will have to wait a little longer. Oral...more

McDonnell Boehnen Hulbert & Berghoff LLP

PocketPair Provides Post on Permutations to Palworld based on Pokémon Patents

I have previously written extensively on the ongoing legal battle between Nintendo / The Pokémon Company (referred to herein collectively as simply "Nintendo") and PocketPair over PocketPair's popular video game Palworld....more

Venable LLP

Spotlight On: Lantus® / Lantus® SoloSTAR® (insulin glargine recombinant) / Basaglar® (insulin glargine) / Semglee® (insulin...

Venable LLP on

Insulin Glargine Challenged Claim Types in IPR and Litigation: Claims include those challenged in litigations and IPRs. Claims are counted in each litigation and IPR, so claims from the same patent challenged in multiple...more

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