News & Analysis as of

Patent Trial and Appeal Board 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

Jones Day

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

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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

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

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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

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

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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

McDermott Will & Schulte

When Is It Really Over? If Additional Proceedings Are Needed, Judgment Is Not Final

The US Court of Appeals for the Federal Circuit, factually distinguishing the concept of finality in this case from its earlier decision in Fresenius USA v. Baxter Int’l, vacated and remanded a district court’s amended final...more

American Conference Institute (ACI)

[Event] 16th Annual Practitioners’ Think Tank on ITC Litigation & Enforcement - May 29th - 30th, Washington, DC

Returning to Washington in May, ACI’s 16th Annual Practitioners’ Think Tank on ITC Litigation & Enforcement is your opportunity to learn from and network with key members of the ITC Bench, senior ITC Attorneys and leading...more

Erise IP

Eye on IPRs, February 2024: Supreme Court Passes on Fintiv Challenge, Parallel IPR/District Court Litigation, First Precedential...

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: SCOTUS Won’t Hear Challenge to PTAB’s Fintiv Rule- The U.S. Supreme...more

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

2023 PTAB Year in Review: Analysis & Trends: The Staying Power of Fintiv: The Effect of Parallel Litigation at the PTAB in 2023

In 2023, Fintiv—the precedential Order issued in 2020 that established a six-factor framework that the Patent Trial and Appeal Board (PTAB) applies when evaluating whether to exercise its discretion to institute an America...more

Wolf, Greenfield & Sacks, P.C.

[Hybrid Event] Damage Control: Mitigating ITC Remedial Orders with Effective Redesign and Parallel Litigation Strategies -...

Join litigation shareholder Libbie DiMarco as she breaks down the latest developments for mitigating ITC remedial orders with effective litigation strategies ranging from product redesigns (and when to introduce them) to PTAB...more

Venable LLP

[Ongoing Program] Life Sciences Series - IPRs, PGRs, and the BPCIA - October 17th, 1:00 pm - 2:00 pm ET

Venable LLP on

We are excited to announce Venable’s inaugural Life Sciences Webinar Series. This month-long series will explore the intricacies and latest developments that shape the life sciences industry. Join us as we hear from our...more

Jones Day

PTAB Issues Back-to-Back Fintiv Denials After Dry Spell

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The PTAB recently issued back-to-back Fintiv denials. The first denial issued on May 4, 2023. Read here about Samsung Electronics Co. Ltd. v. California Institute of Tech., No. IPR2023-00130, Paper 10 (P.T.A.B. May 4,...more

Morgan Lewis

USPTO Unleashes Wave of PTAB Rule Proposals

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The US Patent and Trademark Office (USPTO) published an Advance Notice of Proposed Rulemaking (ANPRM) on April 20 seeking comments on proposed changes to America Invents Act trial proceedings before the Patent Trial and...more

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