Acting Director Clarifies Multi-Petition Policy for Competing Constructions
By Levent Herguner and Matt Johnson - On June 25, 2025, Acting Director Coke Stewart released an informative decision vacating institution of inter partes review (“IPR”) based on two petitions that were primarily filed to present two different constructions....
Inventor Testimony of Reduction Date Leads to Denial
By Jessie Hess*, Christian Roberts, and Matthew Johnson - The Patent Trial and Appeal Board (PTAB) denied institution of an inter partes review (IPR) brought by Par-Kan Company, LLC against Unverferth Manufacturing Company regarding U.S. Patent No. 8,967,940 (“the...
“Settled-Expectations” Analysis May Leave Some Petitioners Feeling Unsettled
By Sue Gerber and Matt Johnson - As discretionary denials are on the rise and institution rates are declining at the PTAB (link), recent decisions from the PTAB have introduced the notion of a patent owner’s “settled expectations” as another reason for the PTAB to...
Discretionary Denial Where Inventors Petitioned for Unpatentability
By Hannah Mehrle and Matt Johnson - Coke Morgan Stewart, the acting director of the United States Patent and Trademark Office (“USPTO”), exercised discretion under 35 U.S.C. § 314(a) to deny Tessell’s (“Petitioner’s”) petition in favor of Nutanix (“Patent Owner”)....
Discretionary Denial of IPR Institution Due to Advanced Hatch-Waxman Litigation
By Nicole Prescott,* Phillip Shelton, and Matt Johnson - In a recent decision, the Patent Trial and Appeals Board (“PTAB”) exercised its discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review (“IPR”) after applying the Fintiv factors,...