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Director Takes On All Institution Duties

Director Takes On All Institution Duties

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

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 will be assigned to a three‑judge APJ...
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...
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...
Trial Date Drives PTAB’s Denial of IPR Institution

Trial Date Drives PTAB’s Denial of IPR Institution

by Mike Lavine | May 16, 2025 | District Court, PTAB News, Trial Institution

By Mike Lavine – On April 16, 2025, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) for several claims of U.S. Patent No. 7,187,307, owned by Universal Connectivity Technologies, Inc. HP Inc., Dell Technologies Inc., Dell...
Third Party IPRs Sway District Court’s Prevailing Party and Costs Rulings

Third Party IPRs Sway District Court’s Prevailing Party and Costs Rulings

by John Marlott | Jan 2, 2025 | District Court, PTAB News

By Connor Scholes, Daniel Sloan, and John Marlott – Third-party IPRs can moot previously favorable decisions and leave a previously successful party to bear its own costs. On October 16, 2024, Judge Rodney Gilstrap denied the plaintiff’s Motion to be Confirmed...
PREVAIL Act Passes Committee

PREVAIL Act Passes Committee

by Matthew Johnson | Dec 18, 2024 | District Court, Estoppel, PTAB News, PTAB Trial Basics

By Levent Herguner, Derek Walker, and Matt Johnson – The Promoting and Respecting Economically Vital American Innovation Leadership (“PREVAIL”) Act has moved to the Senate for a full vote after passing the Senate Judiciary Committee vote 11-10 on November 21,...
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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.