News & Analysis as of

Parallel Proceedings

Jones Day

Acting Director Reverses Previous Discretionary Denial

Jones Day on

For the first time under the bifurcated institution procedures, the Acting Director reversed her own prior discretionary denial, citing changed circumstances based on a settlement in the parallel district court litigation. ...more

Jones Day

Institution Denied Based on Parallel Proceeding and Prior Denial

Jones Day on

On December 6, 2024, Comcast Cable Communications, LLC (“Comcast”) filed three separate petitions for inter partes review (“IPR”) of U.S. Patent No. 9,866,438 (“the ’438 Patent”), which is assigned to Entropic Communications,...more

Goodwin

PTAB Discretionarily Denies Two Petitions, Refers a Third to the Board in Amgen v. Bristol-Myers Squibb

Goodwin on

On July 24, 2025, Acting Director of the USPTO, Coke Morgan Stewart, denied institution of inter partes review in IPR2025-00601 and IPR2025-00602, but referred the petition in IPR2025-00603 to the Board in Amgen Inc. v....more

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

“At Your Discretion” — Discretionary Denials Increase as PTAB Issues Institution Decisions

The first half of 2025 has brought many changes at the United States Patent and Trademark Office (“USPTO”), including policy changes at the Patent Trial and Appeal Board (“PTAB”). At the end of March 2025, the issuance of the...more

Winstead PC

SEC and DOJ Bring Parallel Actions in $275 Million Ponzi Schemes Involving Water Vending Machines

Winstead PC on

There has not been much news regarding SEC enforcement lately, but today the SEC and DOJ both charged a founder of a Washington-based water vending machine manufacturer Water Station Management, LLC and two related companies...more

Goldberg Segalla

Dismissal of Case Affirmed for Lack of Prosecution, Parallel Bankruptcy Trust Litigation No Excuse for Plaintiff’s Delay

Goldberg Segalla on

Back in 2009, Salvador Parra filed suit in the trial court of Jones County, Mississippi against 19 companies for asbestos exposure. He amended to clarify he was a Louisiana citizen but was employed in Mississippi in 1968-69...more

Jones Day

Two Week Deadline for PTAB to Issue Notice of Filing Date Accorded

Jones Day on

On July 18, 2025, Scott R. Boalick, Chief Administrative Patent Judge for the Patent Trials and Appeals Board (“PTAB”), announced that, absent good cause, the PTAB will issue a Notice of Filing Date Accorded within 14 days...more

McDonnell Boehnen Hulbert & Berghoff LLP

IPR Discretionary Denial Rates at the PTAB: The New Normal

Inter partes review (IPR) proceedings are a cost-effective way by which patent challengers can dispute the validity of an issued patent. To institute an IPR, the Patent Trial and Appeal Board (PTAB) must determine that the...more

Kilpatrick

The PTAB’s Discretionary Denial Crackdown: Strategy, Stats, and Survival Tips

Kilpatrick on

Back in March, I wrote about Acting Director Coke Morgan Stewart’s overhaul of the pre-institution discretionary denial process. Since then, much has been written on the topic and, for better or worse, the dust has started to...more

DLA Piper

DOJ’s Revised Policy on Crediting Fines: Emphasis on Victims

DLA Piper on

Without fanfare, the Department of Justice (DOJ or the Department) has published a memorandum revising its policy on when – and how – it will give credit to companies for fines and other payments made to other agencies,...more

WilmerHale

New Internal DOJ Guidance on Compensating Victims and Coordinating Corporate Penalties in Parallel Proceedings

WilmerHale on

On June 5, 2025, the Department of Justice (“DOJ”) directed prosecutors to prioritize compensating victims when resolving multiagency investigations involving corporate defendants. ...more

Carey Olsen

Fraud, Asset Tracing and Recovery - Bermuda (Commercial Dispute Resolution, CDR)

Carey Olsen on

This guide explores the latest legislative, regulatory and enforcement developments in Bermuda and provides expert analysis on industry-wide topics including the local legal framework, the main stages of a fraud case,...more

Carey Olsen

Fraud, Asset Tracing and Recovery 2025 – Cayman Islands (Commercial Dispute Resolution, CDR)

Carey Olsen on

This guide explores the latest legislative, regulatory and enforcement developments in the Cayman Islands and provides expert analysis on industry-wide topics including the local legal framework, the main stages of a fraud...more

ArentFox Schiff

USPTO Reshapes Discretionary Denials for Post-Grant Proceedings

ArentFox Schiff on

The US Patent and Trademark Office (USPTO) recently issued two memoranda reshaping the Patent Trial and Appeal Board’s (PTAB) approach to discretionary denials for parallel proceedings....more

Mayer Brown

Examining New Guidance from the USPTO on Discretionary Denials in AIA Post-Grant Proceedings

Mayer Brown on

Recent changes at the US Patent and Trademark Office (USPTO) concerning the Patent Trial and Appeal Board's (PTAB) discretion to deny institution of inter partes reviews (IPRs) or post-grant reviews (PGRs) based on parallel...more

Jones Day

PTAB Pendulum Swings in Favor of Discretionary Denial

Jones Day on

Recent developments at the USPTO suggest a significant shift in favor of the PTAB exercising discretionary denial and uncertainty on behalf of parties to PTAB proceedings.  ...more

American Conference Institute (ACI)

[Event] 17th Annual Practitioners' Think Tank on ITC Litigation & Enforcement - March 31st - April 1st, Washington, DC

Examine real-world strategies for tackling the most pressing challenges in ITC practice at ACI’s 17th Annual Practitioners' Think Tank on ITC Litigation & Enforcement. Be in the same room with leading in-house counsel,...more

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

USPTO Rescinds Memo Addressing PTAB Discretionary Denial Procedures

On Friday, the USPTO rescinded its June 21, 2022, memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Fintiv memo”). The USPTO notice makes...more

McDermott Will & Schulte

[Webinar] Litigating in the Unified Patent Court: Strategies for Success - February 11th, 11:00 am - 12:00 pm EST

Nearly two years in, the Unified Patent Court (UPC) continues to reshape the patent litigation landscape in Europe by providing swift, cross-border resolutions and an innovative approach to patent enforcement and revocation....more

Akin Gump Strauss Hauer & Feld LLP

PTAB Denies Motion to Compel Discovery of Evidence from Parallel ITC Investigation Due to Lack of Inconsistency

The PTAB denied a petitioner’s motion to compel routine discovery that sought information from a parallel ITC investigation for alleged inconsistent positions taken by patent owner in the IPR. The board found that patent...more

McDermott Will & Schulte

No Attorneys’ Fees Available for Successful IPR in Parallel Court Proceedings

The US Court of Appeals for the Federal Circuit concluded that a party that voluntarily elects to pursue parallel proceedings before the Patent Trial & Appeal Board and the district court is not entitled to recover attorneys’...more

Erise IP

Eye on IPRs, May 2024: Lululemon Earns Partial IPR Win Against Nike; USPTO Issues Proposed IPR Rules

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: PTAB issues initial decisions on Lululemon-Nike IPRs - Lululemon, whose...more

Wolf, Greenfield & Sacks, P.C.

[Webinar] Mid-Year Litigation and PTAB Review - June 26th, 9:00 pm - 10:00 pm ET

Join Wolf Greenfield for a mid-year review of litigation and PTAB trends at 12:00pm ET or 9:00pm ET. This webinar will cover: 2024/2025 patent litigation trends: ITC domestic industry, double patenting, forum shopping,...more

Wolf, Greenfield & Sacks, P.C.

[Webinar] Mid-Year Litigation and PTAB Review - June 26th, 12:00 pm - 1:00 pm ET

Join Wolf Greenfield for a mid-year review of litigation and PTAB trends at 12:00pm ET or 9:00pm ET. This webinar will cover: 2024/2025 patent litigation trends: ITC domestic industry, double patenting, forum shopping,...more

Husch Blackwell LLP

False Claims Act Insights - Railroaded! How to Approach the Twin Tracks of Parallel Proceedings

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Host Jonathan Porter is joined by Troy Clark, Director and Corporate Counsel with Wellstar Health System, to discuss the peculiarities and difficulties of tackling parallel proceedings, that is, investigations and/or...more

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