Director Terminates IPRs for Sotera Violations and the District Court Strikes Invalidity Contentions

by | Sep 17, 2026 | PTAB News, Trial Institution

By Robby Breetz, Ali Morgan,* and Matt Johnson –

On May 12, 2026, the Director of the United States Patent and Trademark Office (“USPTO”), John Squires, granted a patent owner’s motion to terminate three related inter partes reviews (“IPRs”) based on the petitioner’s violation of its Sotera stipulation. IPR2025-00223, Paper 29; IPR2025-00478, Paper 32; IPR2025-00486, Paper 34.[1] On September 14, 2026, the Northern District of California followed suit, striking the invalidity contentions that violated the Sotera stipulation. Concurrent Ventures, LLC v. Advanced Micro Devices, Inc., No. 4:25-cv-09567-JST (N.D. Cal. Sept. 14, 2026) (“District Court Order”). These decisions reflect the USPTO’s and the federal courts’ continued willingness to enforce Sotera stipulations.

On April 22, 2025, Advanced Micro Devices, Inc. and Pensando Systems, Inc. (collectively, “Petitioner”) filed a Sotera stipulation in their district court litigation with XtreamEdge, Inc. (“Patent Owner”) and Concurrent Ventures, LLC, a co-plaintiff and exclusive licensee of the patents at issue. See Concurrent Ventures, LLC v. Advanced Micro Devices, Inc., No. 25-cv-09567-JST, Dkt. No. 78 (N.D. Cal.). Petitioner later filed the same stipulation as an exhibit in each IPR. IPR2025-00223, Exhibit 1048. Through this stipulation, Petitioner represented that, for each patent, “if the Board institutes [these IPRs], then [Petitioner] will not pursue in this case the specific grounds [asserted in its IPRs] . . . , or on any other ground for which the Board institutes, that was raised or could have been reasonably raised in an IPR.” Id. at 3. The PTAB later instituted the requested IPRs in October and November 2025. IPR2025-00223, Paper 14.

After institution and on February 13, 2026, Petitioner explicitly incorporated its IPR grounds by reference in its district court invalidity contentions. IPR2025-00223, Ex. 3103 at 10, 60, 78. For each patent, Petitioner stated: “The [] patent is anticipated and/or rendered obvious by prior art as explained by Defendants’ Petition for Inter Partes Review [], which is incorporated herein by reference.” Id. Patent Owner moved to vacate institution and terminate the IPRs, arguing that these references constituted express violations of Petitioner’s Sotera stipulation. IPR2025-00223, Paper 27. Petitioner opposed the motion and separately filed a motion in the district court proceeding seeking a finding of no Sotera violation. IPR2025-00223, Paper 28; Concurrent Ventures, LLC v. Advanced Micro Devices, Inc., No. 4:25-cv-09567 (N.D. Cal.), Dkt. No. 190.

In opposing Patent Owner’s motion to terminate, Petitioner advanced two main arguments. IPR2025-00223, Paper 28. First, Petitioner argued that disputes regarding potential violations of stipulations should be adjudicated by the district court in which the stipulation is in effect, not by the USPTO. Id. at 6–9. The Director disagreed, stating that stipulations directly affect the Board’s proceedings and that representations to the Office would be rendered meaningless if parties were free to ignore them. IPR2025-00223, Paper 29 at 3–4.

Second, Petitioner argued that the Director should deny the motion to terminate because Petitioner acted in good faith and did not prejudice Patent Owner. IPR2025-00223, Paper 28 at 9–10. Petitioner claimed that its disclosure of prior art references in its invalidity contentions was for “notice purposes,” merely to “preserve [Petitioner’s] rights in the event of de-institution,” and that Patent Owner was not burdened by this disclosure. Id. at 5, 12–14. Again, the Director disagreed, explaining that Petitioner’s position was problematic and effectively undermined the entire purpose of the Sotera stipulation. IPR2025-00223, Paper 29 at 4–5.

On September 14, 2026, the district court issued its order granting in part Plaintiffs’ motion to strike invalidity contentions, finding that by “asserting the IPR grounds in their invalidity contentions, Defendants violated the Sotera stipulation.” District Court Order at 5. The court ordered that “all grounds asserting anticipation or obviousness based on patents and printed publications alone or in combination with other patents or printed publications, in violation of the Sotera Stipulation” be struck. Id. at 12–13. The court agreed with the Director’s reasoning, finding that Defendants’ view that their “invalidity contentions constitute[d] only ‘disclosure’ and not also ‘pursuit’ [wa]s unsustainable.” Id. at 5. The court emphasized that the Sotera stipulation “was not limited to particular stages of the litigation” and that Defendants had entitled the stipulation “Stipulation Regarding Invalidity Contentions,” which “suggest[ed] it was meant to pertain to the invalidity contentions themselves.” Id. The court also denied Defendants’ motion for a finding of no Sotera violation, concluding that the motion sought “an impermissible advisory opinion pertaining not to the proceedings in this Court, but to the parallel IPR proceedings,” was “moot in light of the Director’s decision to de-institute IPR,” and failed on the merits. Id. at 4–5 n.1.

Both the Director and the district court made clear that petitioners should not attempt to circumvent Sotera stipulations by incorporating their IPR grounds into district court invalidity contentions after those IPRs have been instituted. When petitioners do so, the Director may terminate the review, and the district court may strike the offending invalidity contentions—leaving petitioners with no forum to litigate those grounds. As the district court observed, “it may be harsh to deny Defendants any forum to litigate their invalidity contentions,” but “[t]hat consequence follows from Defendants’ conduct.” Id.

[1] The parties filed similar papers and exhibits in each IPR. This article cites to IPR2025-00223.

* Ali was a summer associate in Jones Day’s Cleveland Office.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.