Posts Tagged: "post grant procedures"

Panelists at IPWatchdog’s Virtual PTAB Masters Program 2026 last week had some cynical views on chances for pending patent reform bills, while on Friday other experts offered insights into developments at the U.S. Court of Appeals for the Federal Circuit (CAFC) with respect to review of Patent Trial and Appeal Board (PTAB) cases. Speaking on Thursday’s panel, titled “Capitol Hill & PTAB Politics: Innovation Policy, Congressional Oversight and Mid-term Elections,” panelists first addressed the chances of bills such as the Patent Eligibility Restoration Act (PERA) and the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act advancing this year.

On Friday, the U.S. Patent and Trademark Office designated a series of decisions on discretionary denial requests as either precedential or informative, highlighting considerations important for both inter partes review (IPR) and post-grant review (PGR) proceedings. In particular, precedential designations underscored the favored status of patent validity challenges through PGR petitions, and clarified important timing factors when determining whether to grant petitioner requests for joinder.

As we wind down 2025 it is time to reflect on the year that was, and what the future will bring. This year was punctuated by a structural reset for the U.S. patent system. What unfolded was not just incremental reform, but a coordinated shift driven by leadership change, policy realignment, economic pressure, and accelerating adoption of AI—all converging to reshape how patents are examined, challenged, monetized, and managed. This week on IPWatchdog Unleashed we explore the monumental changes and the biggest trends that impacted the patent and innovation industry during 2025, and which will play an important role in defining 2026.

On Friday, December 12, the U.S. Patent and Trademark Office (USPTO) announced an update to the Patent Trial and Appeal Board (PTAB) Trial Practice Guide implementing a requirement for parties to participate in a pre-hearing conference 15 days prior to America Invents Act (AIA) oral hearings in cases instituted by the USPTO Director. According to a USPTO press release, the purpose of the pre-trial hearing conference will be for the Board to guide the parties as to which issues they should address, as well as to give parties a chance to explain the issues they would like to focus on at the oral hearing.

The deadline for comments on the U.S. Patent and Trademark Office’s (USPTO’s) Notice of Proposed Rulemaking (NPRM) issued in October, titled “Revision to Rules of Practice before the Patent Trial and Appeal Board,” was yesterday, December 2. As of today, the Office has received 10,783 comments and has published just over 1,000 of them. The rules have been broadly welcomed by IP holders and practitioners, and broadly opposed by those who want to preserve the option to easily challenge patents. Below, we summarize several submissions from individuals and organizations on both sides.

The U.S. Court of Appeals for the Federal Circuit (CAFC) has denied three mandamus petitions asking the court to step in and curb the recently-implemented practice by which the U.S. Patent and Trademark Office (USPTO) Director decides whether to institute inter partes review (IPR) proceedings. In the one precedential ruling in In Re Motorola Solutions, Inc., the CAFC—in an opinion authored by Judge Linn—rejected Motorola’s arguments that then-Acting USPTO Director Coke Morgan Stewart violated the Administrative Procedure Act (APA) and the Due Process clause of the Fifth Amendment to the Constitution by deinstituting eight IPR petitions it filed against claims of Stellar LLC’s patents.

Back in April, IPWatchdog Founder and CEO Gene Quinn interviewed me on his podcast, IPWatchdog Unleashed, where we discussed 10 things U.S. Patent and Trademark Office (USPTO) Acting Director Coke Morgan Stewart could do to fix the Patent Trial and Appeal Board (PTAB) with the stroke of a pen. Gene summarized those suggestions here. Admirably, Acting Director Stewart had already been busy with reforms, and some of the suggestions I made have since come to pass. This article identifies those and follows up on suggestions still to be adopted. Here are the 10 suggestions, with the current status of each.

Today, the U.S. Court of Appeals for the Federal Circuit issued a ruling in American Science and Engineering, Inc. v. Stewart vacating a final written decision by the Patent Trial and Appeal Board (PTAB) that invalidated several of American Science and Engineering’s (AS&E) patent claims covering inspection systems using pencil-beam radiation sources. The appellate court faulted the PTAB for not properly articulating how the asserted prior art’s scatter detectors can detect radiation from the claimed pencil-beam configuration.

In the latest slew of Director Discretionary Denial decisions issued last week by the U.S. Patent and Trademark Office (USPTO), Acting USPTO Director Coke Morgan Stewart largely delivered wins for patent owners, denying or partially denying institution on dozens of inter partes review (IPR) petitions. In one representative case, Stewart extended her increasingly important “settled expectations” doctrine to a patent that has been in force for only six years.

Earlier today, Acting U.S. Patent and Trademark Office (USPTO) Director Coke Morgan Stewart addressed the Intellectual Property Business Congress (IPBC) Global 2025, telling those in attendance that the Office is already making headway by chipping away at the record backlog inherited from the Biden Administration. Not surprisingly, however, much of Stewart’s remarks focused on new Patent Trial and Appeal Board (PTAB) initiatives and a desire on the part of the Office to see patent challengers migrate away from filing inter partes review (IPR) challenges and toward filing third-party submissions of prior art during examination so examiners can be presented with the best prior art, which will lead to better examination and fewer mistakes.

Last Friday, U.S. Patent and Trademark Office (USPTO) Acting Director Coke Morgan Stewart issued a pair of orders on Director review of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) petitioned by mobile network provider Motorola Solutions to challenge digital video recording patent claims owned by Stellar LLC. While Stewart’s rulings confirm there is no retroactive application of the USPTO’s recent rescission of previous guidance on PTAB discretionary denials, they also underscore that IPRs instituted prior to the guidance’s rescission this February will be subject to Acting Director Stewart’s discretionary denial framework if Director Review requests on those institution decisions are still pending.

Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Incyte Corp. v. Sun Pharmaceutical Industries, Ltd. dismissing Incyte’s appeal from post-grant review (PGR) proceedings at the Patent Trial and Appeal Board (PTAB) for lack of Article III standing. While the Federal Circuit majority deciding the case found that Incyte couldn’t establish a sufficient injury in fact, Circuit Judge Todd Hughes authored a concurrence echoing his previous concerns regarding the appellate court’s overly rigid and narrow standard for analyzing standing in PTAB appeals.

U.S. Patent and Trademark Office (USPTO) Acting Director Coke Morgan Stewart has provided additional information on the Office’s Interim Processes for Patent Trial and Appeal Board (PTAB) Workload Management in an attempt to address unspecified questions the agency has been receiving about the new procedure. Stewart sent a memorandum to all PTAB Administrative Patent Judges (APJs) last week detailing the new interim process for workload management. According to the memo, to ensure the PTAB can continue to meet its statutory obligations relating to ex parte appeals, the Director will exercise her discretion under 35 U.S.C. 314(a) and 324(a) to determine whether discretionary denial is appropriate for any petition for inter partes review (IPR) or post-grant review (PGR).

Yesterday, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in CQV Co., Ltd. v. Merck Patent GmbH, vacating the Patent Trial and Appeal Board’s (PTAB) determination that CQV failed to show the unpatentability of Merck patent claims to pearlescent automotive coatings in post-grant review (PGR) proceedings. Although the Federal Circuit’s vacatur was based on substantial evidence review of the PTAB’s ruling, most of the appellate court’s opinion dealt with issues surrounding CQV’s Article III standing to appeal the PTAB’s adverse decision without itself facing patent infringement allegations.