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PTAB Issues Notice of Discretionary Denial Rulemaking

PTAB Issues Notice of Discretionary Denial Rulemaking

by Matthew Johnson | Oct 17, 2025 | District Court, Petitions, PTAB News, PTAB Trial Basics, Time Limits, Trial Institution

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 an IPR petitioner to file a stipulation not to pursue...
Discretionary Denial Statistics

Discretionary Denial Statistics

by Matthew Johnson | Oct 15, 2025 | 325(d) issues, PTAB News, PTAB Trial Basics, Trial Institution

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 the Office.  Deputy Director Coke Morgan Stewart continues to be the key...
USPTO Memorandum Clarifies PTAB’s Treatment of Prior Proceedings

USPTO Memorandum Clarifies PTAB’s Treatment of Prior Proceedings

by Matthew Johnson | Oct 9, 2025 | Claim Construction, District Court, PTAB News, PTAB Trial Basics

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 of fact and conclusions of law when adjudicating patent...
Federal Circuit Clarifies Independent Conception Standard for AIA Derivation

Federal Circuit Clarifies Independent Conception Standard for AIA Derivation

by Matthew Johnson | Sep 24, 2025 | PTAB News, PTAB Trial Basics

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 proceeding. In Global Health Solutions LLC v. Selner, the court clarified that...
Post-filing Activity May Create Privity Leading To Section 315(b) Dismissal

Post-filing Activity May Create Privity Leading To Section 315(b) Dismissal

by Matthew Johnson | Sep 16, 2025 | PTAB News, PTAB Trial Basics, Real Party in Interest, Trial Institution

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 date on which the petitioner, real party in interest, or privy of the petitioner is...
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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.