News & Analysis as of

Inter Partes Review (IPR) Proceeding United States Patent and Trademark Office

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

Jones Day

Applying Fintiv to a Parallel ITC Investigation

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The Patent Trial and Appeals Board (“PTAB”) recently denied institution of an inter partes review (“IPR”), exercising its discretion under 35 U.S.C. § 314(a)and Apple Inc. v. Fintiv Inc., IPR2020-00019 (PTAB Mar. 20, 2020)...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

Fish & Richardson

The PREVAIL Act Is Back. Will It Prevail This Time?

Fish & Richardson on

On May 1, 2025, Senators Chris Coons (D-DE), Thom Tillis (R-NC), Dick Durbin (D-IL), and Mazie Hirono (D-HI) reintroduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act. The...more

Jones Day

April 2025 Institution Rate Slips Below 45 Percent

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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

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

DLA Piper

How Delayed Notice of Date Accorded Mailings May Affect Inter Partes Review

DLA Piper on

Inter partes review (IPR) practices have seen significant changes since US Patent and Trademark Office Acting Director Coke Stewart assumed her current role in January 2025. Perhaps the most significant change has been Acting...more

Sheppard Mullin Richter & Hampton LLP

Undetectable Amount of Magnification IS Magnification

This Federal Circuit Opinion analyzes invalidity based on anticipation and obviousness, more specifically based on implicit claim construction of the claim limitation and inherent disclosures....more

Jones Day

Acting Director Releases First Decisions Under New Bifurcated Process

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On May 16, 2025, USPTO Acting Director Coke Morgan Stewart released the first four discretionary denial decisions under the PTAB’s new process. Under the new process, the parties separately brief discretionary denial issues...more

Fish & Richardson

Navigating Change at the USPTO

Fish & Richardson on

While it may seem like the only constant at the United States Patent and Trademark Office (USPTO) is change, that sentiment rings especially true in 2025. With a new presidential administration in the White House and numerous...more

Rothwell, Figg, Ernst & Manbeck, P.C.

The USPTO Provides Further Guidance on Discretionary Denials Policy

The USPTO’s recent guidance on discretionary denials has shifted patent practitioners back to the Fintiv and Sotera Wireless framework....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

Jones Day

Director Review: PTAB Instructed to Allow Narrowly Tailored Discovery Regarding Time Bar

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USPTO Acting Director Coke Morgan Stewart recently vacated and remanded three Final Written Decisions from the PTAB.  Semiconductor Components Indus. v. Greenthread, LLC, IPR2023-01242, IPR2023-01243, IPR2023-01244, Paper 94...more

Foley Hoag LLP

Reshaped IPR Landscape: Narrower Estoppel and Fewer New Cases

Foley Hoag LLP on

Key Takeaways - - A recent Federal Circuit decision in a case involving an inter partes review (IPR) significantly narrowed a patentee’s ability to rely on estoppel to block a defendant from raising invalidity grounds. -...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

Morrison & Foerster LLP

Discretionary Denials—Act II

On March 26, 2025, the Acting Director of the United States Patent and Trademark Office fundamentally changed how the Patent Trial and Appeal Board (“PTAB”) initially considers petitions in post grant proceedings under the...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Provides Clarity on Use of Applicant Admitted Prior Art (“AAPA”) in IPRs

Qualcomm Incorporated v. Apple Inc., No. 23-1208 (Fed. Cir. 2025)—On April 23, 2025, the Federal Circuit reversed the Patent Trial and Appeal Board’s finding that claims of Qualcomm’s U.S. Patent No. 8,063,674 (“the ’674...more

Fish & Richardson

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

Fish & Richardson on

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

Haug Partners LLP

The PTAB’s Overhaul of Its Discretionary Denial Procedures Signals a Pro-Patent Pivot

Haug Partners LLP on

Since Acting USPTO Director Coke Morgan Stewart took office in 2025, the Patent Trial and Appeal Board (PTAB) has overhauled its discretionary denial procedures for inter partes reviews (IPRs) and post-grant reviews (PGRs)....more

McDermott Will & Emery

Designated Informative: PTO Director Declines IPR Institution Following District Court § 101 Invalidation

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The US Patent & Trademark Office (PTO) designated a recent Director Review decision as informative, signaling its significance for future proceedings. The decision emphasizes that a final district court ruling invalidating a...more

Irwin IP LLP

Fair Shot at Privity: Director Reverses PTAB on Discovery Ruling 

Irwin IP LLP on

Semiconductor Components Indus., LLC v. Greenthread LLC, IPR2023-01242, -01243, -01244 (USPTO Apr. 30, 2025) - The USPTO Director’s recent decision in Semiconductor Components v. Greenthread squarely addresses a recurring...more

Vinson & Elkins LLP

Federal Circuit Defines Scope of IPR Estoppel

Vinson & Elkins LLP on

In Ingenico Inc. v. IOENGINE, LLC, the Federal Circuit defined for the first time the scope of inter partes review (“IPR”) estoppel in district court and International Trade Commission (ITC) proceedings: IPR estoppel applies...more

Morrison & Foerster LLP

The Rise of System Art: The Federal Circuit Shelters System Art From IPR Estoppel

Prior art patents and publications have long been the primary source for anticipation and obviousness assertions by defendants in IP litigation. System art—an actual system or device—is a less common source of prior art due...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

Kilpatrick

4 Key Takeaways | Recent Changes with Respect to the New Administration

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Kilpatrick’s Kris Doyle, David Reed, Kate Klein, and Ditty Shrivastava recently presented at the annual Kilpatrick Intellectual Property Seminar Series on the topic of “Recent Changes with Respect to the New Administration.”...more

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