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Two’s Company, Three’s a (Discretionary) Crowd

Two’s Company, Three’s a (Discretionary) Crowd

by Carl Kukkonen | May 13, 2026 | Joinder, PTAB News, PTAB Trial Basics

By Carl Kukkonen – On January 9, 2026, the USPTO designated a Director decision in IPR2025-00258 as precedential, offering guidance on when the Patent Trial and Appeal Board (PTAB) will exercise its discretion to deny institution of inter partes review (IPR)...
Licensing Considerations in Informative Discretionary Denial Decisions

Licensing Considerations in Informative Discretionary Denial Decisions

by Sarah Geers | May 4, 2026 | PTAB News, PTAB Trial Basics, Trial Institution

By Sarah Geers – On January 9, the USPTO designated as informational two recent Director decisions involving licensing activities, highlighting the evolving nature of “settled expectations” in discretionary denial determinations.  The decisions—Apple Inc. v....
INFORMATIVE: Conflicting Claim Construction Positions Result in Denial

INFORMATIVE: Conflicting Claim Construction Positions Result in Denial

by Matthew Johnson | Mar 26, 2026 | Claim Construction, PTAB News, PTAB Trial Basics, Trial Institution

By Laura Vining and Matt Johnson – USPTO Director John Squires issued a decision on November 5, 2025, vacating a prior institution decision and denying institution in Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00340, Paper 18.  Director Squires denied...
INFORMATIVE: No Discretionary Denial Where Prior IPR Suggests Material Error By Office

INFORMATIVE: No Discretionary Denial Where Prior IPR Suggests Material Error By Office

by David Maiorana | Mar 19, 2026 | PTAB News, PTAB Trial Basics, Trial Institution

By David Linden and Dave Maiorana – The Acting Director ssued a decision declining to exercise discretionary denial in three related inter partes reviews (“IPRs”) filed by Padagis US LLC (“Padagis”): IPR2025-00464, IPR2025-00465, and IPR2025-00466 (collectively,...
Claim Construction Stipulation Avoids Discretionary Denial

Claim Construction Stipulation Avoids Discretionary Denial

by Matthew Johnson | Feb 4, 2026 | Claim Construction, PTAB News, PTAB Trial Basics, Trial Institution

By Ian Adams, Matt Modderman, Matt Johnson – USPTO Director John Squires issued a decision on October 3, 2025, denying a request to discretionarily deny institution in Caption Health, Inc. v. The University of British Columbia, IPR2025-01422, Paper 15 at 3 (Dec....
USPTO Designates New Precedents on PTAB Discretionary Denial

USPTO Designates New Precedents on PTAB Discretionary Denial

by Carl Kukkonen | Jan 21, 2026 | PTAB News, PTAB Trial Basics, Trial Institution

By Carl Kukkonen and Matt Johnson – On January 9, 2026, USPTO Director John A. Squires designated four recent discretionary-denial rulings as precedential and nine more as informative, formalizing a developing framework for how and when the Office will exercise...
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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.