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PTAB Voluntary Search Disclosure Declarations: A New Factor Supporting Institution

PTAB Voluntary Search Disclosure Declarations: A New Factor Supporting Institution

by Matthew Johnson | Dec 23, 2025 | Prior Art Issues, PTAB News, PTAB Trial Basics, Trial Institution

By Ruth Brindel,* Daniel Sloan, and Matt Johnson On November 17, 2025, USPTO Director John Squires issued a memorandum introducing a new procedure allowing petitioners to submit a voluntary Search Disclosure Declaration (SDD) that explains the petitioner’s search...
Prosecution Error Evidence & Timing Considerations Sends IPR Forward

Prosecution Error Evidence & Timing Considerations Sends IPR Forward

by Matthew Johnson | Dec 18, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Ruth Brindel* and Matt Johnson The USPTO’s Acting Deputy Director, Coke Morgan Stewart, issued a decision on October 3, 2025, declining to exercise discretion to deny institution in Carbyne, Inc. v. Tritech Software Systems, IPR2025-00959, Paper 11 (Oct. 3 2025)....
Collateral Estoppel May Not Apply When Claim Interpretation Standards Differ

Collateral Estoppel May Not Apply When Claim Interpretation Standards Differ

by Matthew Johnson | Nov 19, 2025 | Claim Construction

By Thane Bonnett* and Matt Johnson – In its recent decision in RØDE Microphones, LLC et. al. vs. Zaxcom, Inc., the PTAB declined to apply collateral estoppel based on prior post-grant proceedings because the prior proceedings had applied a different standard of...
Proposed Rulemaking Aims to Change Access to IPR Proceedings

Proposed Rulemaking Aims to Change Access to IPR Proceedings

by Matthew Johnson | Nov 17, 2025 | District Court, Federal Circuit Appeal, PTAB News, PTAB Trial Basics, Trial Institution

By Thane Bonnett,* Daniel Sloan, and Matt Johnson – On October 17, 2025, the USPTO issued a notice of proposed rulemaking (“Notice”) regarding the rules of practice for inter partes review before the PTAB.  The proposed rules do not apply to post grant review...
Discretionary Decision Statistics Update

Discretionary Decision Statistics Update

by Matthew Johnson | Nov 4, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Adam J. Cook, Daniel C. Sloan, and Matt Johnson – The October 17 Memo from Director Squires marked the end of a distinct discretionary denial era, the Interim Era.  Per the memo, as of October 20, all institution decisions (discretionary, non-discretionary,...
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    The opinions expressed are those of the authors and do not necessarily reflect the views of Jones Day or its clients. The posts and information provided are for general information purposes and are not intended to be and should not be taken as legal advice.