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3 days ago | 
jdsupra.com | Matthew Johnson |Daniel Sloan
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 and then the Director issues a decision on whether discretionary denial is appropriate. The Acting Director discretionarily denied review in two cases and granted review in another two cases.
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1 week ago | 
jdsupra.com | Matthew Johnson |Daniel Sloan
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 (P.T.A.B. April 24, 2025). The Acting Director’s decision highlights the importance of scrutinizing the PTAB’s analysis of dispositive procedural matters.
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2 weeks ago | 
jdsupra.com | Matthew Johnson |Evan Tassis
Recently, an ITC Administrative Law Judge applied IPR statutory estoppel under 35 U.S.C. § 315(e)(2) in denying a Respondent’s motion for summary determination of invalidity in Certain Audio Players and Components Thereof, Investigation No. 337-TA-1329. The ALJ reasoned that Respondent was barred from asserting the same references it successfully asserted at the PTAB.
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1 month ago | 
jdsupra.com | Robert Levent Hergüner |Matthew Johnson
In Thermaltake Technology Co., Ltd. et al v. Chien-Hao Chen et al, IPR2024-01230, Paper 12 (PTAB Feb. 19, 2025), the PTAB granted the institution of inter partes review (“IPR”) while an ex parte reexamination (“EPR”) on the same patent was ongoing.
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1 month ago | 
jdsupra.com | Matthew Johnson |Shane Padilla
Recently, the Patent Trial and Appeal Board (“the Board”) was persuaded to consider the merits of three out of seven concurrent petitions for an inter partes review of a single patent due to the patent’s complicated claiming structure involving multiple dependencies. Apple Inc. v. Smith Interface Techs., LLC, IPR2024-01086, Paper 10 (Feb. 13, 2025). In June 2024, Apple Inc.
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2 months ago | 
jdsupra.com | Jennifer Chheda Ph.D |Sarah A. Geers |Matthew Johnson
On March 26, 2025, the U.S. Patent and Trademark Office ("USPTO") acting director sent a memorandum regarding a new interim process for workload management to all Patent Trial and Appeal Board ("PTAB") judges.
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2 months ago | 
jdsupra.com | Matthew Johnson |Joshua Nightingale |Daniel Sloan
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. On March 24, 2025, following the February 28, 2025 rescission of former Director Vidal’s June 21, 2022 memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation,” Chief Administrative Patent Judge Scott R.
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2 months ago | 
jdsupra.com | Matthew Johnson
After rescinding the June 2022 guidance regarding Fintiv, the PTAB issued updates to how they will consider discretionary denial issues under Section 314(a) on Monday. The updated guidance states:On February 28, 2025, the USPTO rescinded the June 21 , 2022 memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Interim Procedure”).
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2 months ago | 
jdsupra.com | Matthew Johnson
Honeywell filed a petition for inter partes review of 3G Licensing’s U.S. Patent No. 7,319,718, which claims a coding scheme for transmitting information in 3G mobile communication systems. The PTAB found none of the challenged claims unpatentable. Honeywell appealed.
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2 months ago | 
mondaq.com | Ellen Geyer |Matthew Johnson
The Federal Circuit rejected a recent argumentthat the PTAB does not have inter partes review (IPR)jurisdiction over expired patents. Because even expired patentsinvolve the grant of public rights, the court explained that thePTAB's authority is not tied to the patent's status. The case arose after Gesture was granted a patent for its imagecapture technology, which triggers a digital camera to capture animage when a particular motion – a gesture – isdetected in the visual field.
