USPTO Memorandum Clarifies PTAB’s Treatment of Prior Proceedings

by | 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 claims in America Invents Act (AIA) trial proceedings.  The memorandum applies when the challenged claims, or substantially similar claims, have already been adjudicated in a prior proceeding before the USPTO, a district court, or the U.S. International Trade Commission (ITC).  In these situations, if the PTAB reaches a different finding of fact or conclusion of law than the prior proceeding, the PTAB must explain in the institution or final written decision why a different outcome is warranted.

When the same or substantially same evidence and/or arguments are relied upon in the AIA trial as in the prior proceeding, the PTAB must provide a more detailed explanation for reaching a different outcome.  To make its assessment, the PTAB will consider relevant materials submitted by the parties from the prior proceeding, such as an opinion, a judgment, trial testimony, or other evidence.  The PTAB may also authorize additional briefing.

The UPSTO further stated in its September 16 communication that parties to an AIA trial are required to inform the PTAB of developments regarding validity or patentability adjudications in related matters identified under 37 C.F.R. § 42.8(b)(2).  The PTAB’s scheduling order, or a revised scheduling order, in the AIA trial will communicate this requirement to the parties.

In the wake of the memorandum, the PTAB issued a General Order applying the memorandum to a broad set of pending IPRs and PGRs.  The order, signed by Acting Chief Administrative Patent Judge Kalyan K. Deshpande, directs parties to notify the PTAB of any developments regarding validity or patentability of challenged claims, or substantially similar claims, in any other judicial or administrative matter that would affect, or be affected by, a decision in the listed IPRs and PGRs.  Parties must notify within five business days of the development by emailing Trials@uspto.gov.

Takeaway: AIA trials cannot be viewed in isolation from related proceedings in other forums.  Parties have an ongoing duty to inform the PTAB regarding validity or patentability developments in related matters.

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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.