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Patents United States Patent and Trademark Office Patent Litigation

Jones Day

Delegated Rehearing Panel Sends Lifeline to Mercedes-Benz

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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

McDermott Will & Emery

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

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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

BakerHostetler

Irreparable Harm Reimagined: The Government’s Patent Intervention in East Texas

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In a bold and unusual move, the DOJ’s Antitrust Division and the USPTO have jointly filed a Statement of Interest in a patent case – not before the Supreme Court or Federal Circuit, but in a district court in East Texas. The...more

Fish & Richardson

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

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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

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

U.S. IP Update – June 2025

Sterne Kessler’s U.S. IP Update is a newsletter delivering the latest developments in U.S. intellectual property law, tailored for companies and legal counsel in Korea. Stay informed on key court decisions, policy changes,...more

Jones Day

USPTO 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

Irwin IP LLP

No Rhythm, No Review: USPTO Director Skips a Beat on IPRs. 

Irwin IP LLP on

iRhythm Technologies, Inc., v. Welch Allyn, Inc., IPR2025-00363, IPR2025-00374, IPR2025-00376, IPR2025-00377, IPR2025-00378 (P.T.A.B. June 6, 2025) - On June 6, 2025, United States Patent and Trademark Office (“USPTO”)...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

K&L Gates LLP

First Denial Based on USPTO’s New Discretionary Denial Factors

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Earlier this year, Chief Judge Boalick issued guidance on the USPTO’s recission of “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation,” explaining how the Fintiv...more

Volpe Koenig

“Settled Expectations” as the New Gatekeeper for PTAB Discretionary Denials: Why Late-Stage IPRs Are Getting Harder to File

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When Acting USPTO Director Coke Morgan Stewart denied institution in Dabico v. AXA Power IPR2025-00408  Paper 21, much of the commentary focused on the result....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

Volpe Koenig

When an IDS Comes Back to Haunt You: Lessons from iRhythm v. Welch Allyn

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Patent attorneys are well-versed in the function of the Information Disclosure Statement (IDS) during prosecution. We understand that listing prior art in an IDS satisfies the duty of candor, helps insulate patents from...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

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

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

Wolf, Greenfield & Sacks, P.C.

Practical Guide to Claiming Small Molecules with Functional Language

Patent claims reciting compounds where at least one group of a compound genus is defined by its function are common. For example, familiar claim terms such as “chelating moiety,” “linker,” and “binding moiety” describe a...more

DLA Piper

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

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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

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

MoFo Life Sciences

Subject Matter Eligibility of AI Medical Treatments

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Artificial intelligence (AI) has quickly become a springboard for breakthroughs in personalized medicine, enhanced medical imaging, and predictive modeling for drug development. And given the role it played in two recent...more

Fish & Richardson

Navigating Change at the USPTO

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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

McDermott Will & Emery

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

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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

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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

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

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