Visit Jones Day’s PTAB Litigation blog at www.ptablitigationblog.com.
By Adam Cook, Christian Roberts, and Matt Johnson –
On October 29th, Acting Chief Judge Deshpande and Vice Chief Judge Kim discussed Director institution of AIA trials, where the Director
Latest from PTAB Litigation Blog - Page 4
Divergent Claim Construction Results in Discretionary Denial
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By Evan Tassis and Matt Johnson –
In a recent decision, Acting Director Coke Morgan Stewart granted Patent Owner’s request for discretionary denial in Sun Pharmaceuticals Industries Inc. v. Nivagen Pharmaceuticals, Inc.,
Settled Expectations Insufficient To Prevent IPR Review
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By Mike Lavine –
On September 4, 2025, the USPTO’s Acting Director declined H2 Intellect LLC’s request for discretionary denial of an IPR petition filed by Home Depot U.S.A., Inc. Central to
Director Takes On All Institution Duties
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By Matt Johnson –
On October 17, Director Squires announced that he will assume responsibility for all post‑grant trial institution decisions. When the Director determines that a petition warrants institution, the matter
PTAB Issues Notice of Discretionary Denial Rulemaking
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By Matt Johnson –
On October 17th, the PTAB issued a Notice of Proposed Rulemaking regarding criteria for the Office to apply when making discretionary denial determinations.
The proposed rule would:
- Require
Discretionary Denial Statistics
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By Adam Cook, Daniel Sloan, and Matt Johnson –
Since the inception of the bifurcated review process at the PTAB, Jones Day has been analyzing every discretionary decision released by
USPTO Memorandum Clarifies PTAB’s Treatment of Prior Proceedings
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By Pranita Dhungana and Matt Johnson –
The United States Patent and Trademark Office (USPTO) recently issued a memorandum addressing how the Patent Trial and Appeal Board (PTAB) should handle prior findings
Show Me the Evidence: Primary References Still Required after LKQ
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By Ernie Oleksy and John Evans –
Federal Circuit decisions applying the new standards for design-patent obviousness continue to inform how patent challengers should frame their plans of attack, both in the
Federal Circuit Clarifies Independent Conception Standard for AIA Derivation
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By Kate Meng and Sarah Geers –
More than a decade after the enactment of the America Invents Act (AIA), the Federal Circuit has issued its first opinion addressing an AIA derivation
Post-filing Activity May Create Privity Leading To Section 315(b) Dismissal
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By Sue Gerber and Matt Johnson –
Under Section 315(b), an IPR may be dismissed as time barred “if the petition requesting the proceeding is filed more than 1 year after the