News & Analysis as of July 30, 2025

Denial of Institution

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The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +

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

Vinson & Elkins LLP on 6/18/2025

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

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

Volpe Koenig on 6/16/2025

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

Applying Fintiv to a Parallel ITC Investigation

Jones Day on 6/11/2025

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

Two Many IPRs: Different References Insufficient for Parallel IPRs

Jones Day on 1/23/2025

The Patent Trial and Appeal Board (“PTAB”) recently denied institution in an inter partes review (“IPR”) where Petitioner later filed a parallel petition against the same claims of the same patent. Shenzhen Root Tech. Co.,...more

Prior Art Asserted in Second Petition Should Have Been Asserted in the First

Jones Day on 1/13/2025

The PTAB denied institution of a second inter partes review (“IPR”) petition filed by Aylo Freesites (“Petitioner”) after having previously instituted inter partes review of Petitioner’s first petition related to the same...more

Issue 34: PTAB Trial Tracker

Goodwin on 8/20/2021

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

PTAB Strategies and Insights - July 2021

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 8/2/2021

[co-author: Jay Bober, Summer Associate] The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for...more

PTAB Strategies and Insights - March 2021

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/31/2021

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

PRECEDENTIAL: Trial Court Stay Weighs Strongly Against Fintiv Denial

Jones Day on 3/8/2021

The USPTO designated Snap, Inc. v. SRK Tech. LLC, IPR2020-00820 (PTAB October 21, 2020) (Paper 15) (“Snap”) as precedential as to § II.A regarding its discretion under 35 U.S.C. § 314(a) to deny institution of inter partes...more

PTAB Highlights Two Opinions Regarding Its Power to Decline Institution

McDermott Will & Emery on 10/10/2019

Addressing the scope of its discretion under 35 USC § 325(d), the Patent Trial and Appeal Board (PTAB) designated two opinions as precedential or informative. In Adaptics Limited v. Perfect Company, Case No. 2018-01596...more

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