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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)....
USPTO Director Institution Decisions: Back To The Future?

USPTO Director Institution Decisions: Back To The Future?

by John Marlott | Dec 10, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By John Marlott – USPTO Director Squires recently published an open letter announcing that he was “Bringing the USPTO Back to the Future” by assuming responsibility for all IPR and PGR institution decisions.  Why the reference to the 1980s movie recently...
PRECEDENTIAL: PTAB Clarifies Real Party in Interest Analysis

PRECEDENTIAL: PTAB Clarifies Real Party in Interest Analysis

by Carl Kukkonen | Nov 26, 2025 | PTAB News, PTAB Trial Basics, Real Party in Interest

By Carl Kukkonen and Matt Johnson – The Patent Trial and Appeal Board (PTAB) has designated as precedential a decision that squarely reaffirms the statutory requirement to identify all real parties in interest (RPI) in AIA petitions. By elevating Corning Optical...
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...
Director Terminates Proceeding Based on Inconsistent Testimony

Director Terminates Proceeding Based on Inconsistent Testimony

by David Maiorana | Nov 12, 2025 | Evidentiary Issues, Expert Witnesses, PTAB News, PTAB Trial Basics

By David Linden, Dave Maiorana, Thane Bonnett,* and Pranita Dhungana – On October 1, 2025, USPTO Director John Squires issued his first Director Review decision, terminating in whole IPR2024-00465 (“IPR465”) based on unreliable and inconsistent expert...
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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.