Acting Director Releases First Decisions Under New Bifurcated Process

by | Jun 3, 2025 | PTAB News, Time Limits, Trial Institution

By Daniel C. Sloan and Matt Johnson –

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.  The decisions in each of these four cases focus almost entirely on the timing between the trial court schedule and the schedule of proceedings before the PTAB.  The Acting Director dismissed other procedural arguments as insufficiently explained.

For example, in Twitch Interactive Inc. v. Razdog Holdings LLC, the Acting Director determined that discretionary denial was not appropriate.  IPR2025-00307, IPR2025-00308, Paper 18 (May 16, 2025).  The Acting Director noted that the Patent Owner’s request was primarily based on a parallel proceeding in the Northern District of California.  There was no trial date scheduled in the district court litigation, however.  The median time to trial statistics within the district suggested that trial would not begin until February 2027, well after the PTAB’s projected July 2026 final written decision date.  Petitioner also presented evidence that judges in the Northern District of California granted 76% of all post-institution motions to stay pending inter partes review and the judge that the parties were appearing before had granted all post-institution stay motions since 2016.

In Twitch Interactive, Patent Owner made several arguments regarding the alleged weaknesses of the petition, including that there was undue reliance on expert opinion, that “the settled expectations of the parties,” and the importance of an ex parte reexamination proceeding challenging one of the two patents at issue.  According to the Acting Director, however, “none of these allegations [were] sufficiently explained.”  Id. at 3.  The Acting Director instead stated that the decision was based “on the totality of the evidence and arguments the parties have presented.”  Id. at 2.  In fact, the Acting Director made the same statement about the totality of the evidence in each of the decisions.

Conversely, in Arm Ltd. v. Daedalus Prime, the Acting Director granted Patent Owner’s request to discretionarily deny inter partes review. IPR2025-00207, Paper 10 (May 16, 2025).  The projected final written decision date in that case was June 2026 and the trial date in a parallel district court proceeding was in January 2026.  Moreover, the time-to-trial statistics suggested that trial would be between March and May 2026.  There was also insufficient evidence to suggest that the court would stay the proceedings pending the outcome of the final written decision.  Thus, unlike in Twitch Interactive, it was likely that a final written decision from the PTAB would issue only after a parallel trial had occurred.

Takeaway: Although the focus is on the totality of the evidence and the arguments, the date of trial in a parallel proceeding is highly relevant to the Acting Director’s determination regarding discretionary denial.  Cases where a final written decision will likely issue before a parallel trial court matter concludes can occur are more likely to be instituted.

The following two tabs change content below.
My LinkedIn profile

Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.