IP UPDATE
Exploring the latest in intellectual property law
IP UPDATE
Exploring the latest in intellectual property law
post-grant review PGR
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Article III standing: Claims of future injury must be sufficiently tied to the claim limitations at issue

by | Apr 16, 2026 |

The US Court of Appeals for the Federal Circuit dismissed an appeal of a post-grant review (PGR) for lack of Article III jurisdiction, finding that the appellant failed to meet its burden to prove it would likely suffer an injury in fact. ironSource Ltd. v. Digital Turbine, Inc., Case No. 2024-1831 (Fed. Cir. Apr. 7, 2026) (Moore, Lourie, Reyna J.J.)

Mobile advertising company Digital Turbine has a patent related to streamlined background processes for downloading and installing mobile applications. That patent is a continuation an earlier related patent which was invalidated during a prior PGR proceeding. Mobile advertising and app monetization platform ironSource once had a product on the market called Aura, which included “Click to Install” features. When faced with what it referred to as “veiled threats” of liability for infringement of the earlier patent, ironSource modified its Aura product – eventually removing it from the market – and petitioned the Patent Trial & Appeal Board for a PGR of the continuation patent’s claims 1 – 22.

During the PGR, the Board held that claims 1 – 22 were all unpatentable pursuant to its earlier decision in the earlier PGR but allowed Digital Turbine to amend the claims. In so doing, Digital Turbine included, among other changes, two narrowing limitations to the claims. The Board concluded that ironSource had not carried its burden of proving that the newly amended claims were unpatentable or ineligible for patent protection. ironSource appealed.

On appeal, the Federal Circuit explained that while Article III standing is not required before the Board, it is required to sustain an appeal of the Board’s decisions. The burden is on the appellant to prove it meets the requirements for standing under federal law at the time of filing. Federal law requires an appellant to prove it has “(1) suffered an injury in fact, (2) that is fairly traceable to the challenged conduct of the [appellee], and (3) that is likely to be redressed by a favorable judicial decision.” Spokeo. Specific to patent cases, the appellant must show concrete evidence of its intended future actions that pose a substantial risk of infringement or an assertion of infringement.

To meet this obligation, ironSource submitted a declaration by one of its senior directors. The declarant discussed past changes and concessions to the Aura product that ironSource had made in light of Digital Turbine’s patent rights. It also stated that ironSource intended to reintroduce the Aura product to the market. Nevertheless, the Federal Circuit held that ironSource failed to meet its burden of tying that potential product’s features to the patent’s amended claims. Instead, ironSource focused on the claims of the original, alleging that they were “substantially identical” to the continuation patent’s claims, i.e., the claims Digital Turbine had previously “threatened” against the company. The Court emphasized, however, that ironSource failed to account for the narrowing limitations in the amended claims and thus failed to prove a likely injury in fact from infringement of the substituted claims.

Finally, the Federal Circuit distinguished [...]

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USPTO signals new emphasis on US manufacturing in IPR and PGR institution decisions

by | Mar 19, 2026 |

The United States Patent and Trademark Office (USPTO) issued a Memorandum on March 11, 2026, signaling that the Patent Trial & Appeal Board may place increased weight on domestic manufacturing activity and the interests of small businesses when deciding whether to institute inter partes review (IPR) or post grant review (PGR).

The America Invents Act (AIA) established IPR and PGR proceedings as mechanisms for challenging the validity of issued patents before the Board. In establishing the framework for institution decisions, the statute directs the USPTO Director to consider broader policy concerns, including the impact on the US economy, the integrity of the patent system, and the efficient administration of the USPTO.

The Memorandum highlights concerns regarding the decline of US manufacturing, particularly in the electronics and computer sectors. Citing government studies, the USPTO notes that the offshoring of key industries has contributed to economic and national security vulnerabilities. According to the USPTO, these developments bear directly on the Director’s statutory obligation to consider the economic effects of Board institution decisions.

While some stakeholders contend that IPR and PGR proceedings protect US manufacturers and small businesses from weak patents, the USPTO observed that many of the most frequent petitioners are large companies that report little domestic manufacturing activity and have not made meaningful investments in US production. According to the Memorandum, this data prompted the USPTO to question whether the current discretionary institution framework adequately accounts for the interests of companies that do invest in domestic manufacturing.

As a result, the USPTO announced that certain factors related to US manufacturing and small businesses may now inform discretionary institution determinations. The USPTO encourages parties to address these considerations explicitly in their discretionary briefing.

When evaluating whether to institute an IPR or PGR, the Director may consider:

  • Whether the products accused of infringement in parallel litigation are manufactured in the United States or tied to domestic manufacturing investments.
  • Whether the patent owner produces competing products in the US.
  • Whether the petitioner qualifies as a small business that has been sued for patent infringement.

The Memorandum clarifies that manufacturing considerations are not limited to final assembly but may also encompass the production of components and situations in which products manufactured domestically are later processed abroad. For method claims, the relevant product for this analysis will be the device used to perform the claimed method.

These considerations apply to all to all IPRs and PGRs in which the due date for a patent owner discretionary brief has not yet elapsed.



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USPTO elevates precedential and informative decisions on discretionary institution in IPR/PGR

by | Jan 22, 2026 |

The United States Patent and Trademark Office (USPTO) designated four decisions as precedential and nine decisions as informative, all highlighting the factors the USPTO will consider in determining whether to deny a petition for inter partes review (IPR) or post-grant review (PGR) based on discretionary considerations.

Although the individual outcomes differ among the four precedential decisions (two granting institution and two denying), the decisions provide insight on how the USPTO will exercise its discretion to institute and deny America Invents Act (AIA) trials based on timing, copycat petitions and joinder, sequential petitions, and policy preference for PGR availability. The USPTO designated the following decisions precedential:

The USPTO designated the following decisions as informative, illustrating the types of factual scenarios that may support either discretionary denial of a petition or, conversely, a decision to consider the petition on the merits.

Together, these informative decisions provide concrete, real‑world examples of how the Director is likely to applies discretion under 35 USC §§ 314(a) and 324(a), ranging from circumstances where institution is disfavored (e.g., parallel litigation dynamics, petition quality, procedural posture) to situations where the USPTO [...]

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USPTO introduces voluntary search disclosure declarations in Board proceedings

by | Dec 4, 2025 |

The Director of the US Patent and Trademark Office (USPTO) issued a memorandum announcing a new initiative aimed at improving examination quality and transparency in Patent Trial & Appeal Board proceedings.

Effective immediately, petitioners in inter partes review (IPR) and post-grant review (PGR) proceedings may submit a search disclosure declaration (SDD) that explains in detail:

  • Databases and repositories consulted
  • Search approach, search terms, filters, queries, and classification pathways used
  • Analytics or publicly accessible resources referenced
  • Time spent searching and reviewing results
  • Any other relevant methodology details

The submission is voluntary, and petitioners that do not provide an SDD will not be penalized. However, when deciding whether to institute a proceeding, the Board will view submission of an SDD as a favorable discretionary factor, especially if the SDD reveals new or underutilized search pathways relevant to USPTO practices. The SDD may also help demonstrate potential USPTO error during examination, according to the memorandum.

The SDD can be filed confidentially under 37 C.F.R. § 42.14, with a motion to seal and request for in camera review. Protective orders must allow the USPTO to use the information for internal training and analytics. Confidential SDDs will not be publicly disclosed except as required by law, and deposition testimony related to an SDD will generally not be permitted.

Practice note: While optional, submitting an SDD can strengthen an IPR or PGR petition by signaling transparency and contributing to improved USPTO practices. Consider incorporating this step into your Board strategy, especially when leveraging sophisticated search tools or methodologies that the USPTO does not typically use during examination.



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Spooky silence: USPTO Director summarily denies 13 IPR petitions

by | Nov 6, 2025 |

On October 31, 2025, the Director of the United States Patent and Trademark Office (USPTO) issued a notice denying institution of inter partes review (IPR) in 13 separate proceedings. The notice listed only the docket numbers of the affected IPRs and offered no substantive explanation for the denials, stating simply: “Pursuant to 35 U.S.C. § 314(a), institution of inter partes review is denied in the [listed] proceedings.” The summary denial follows the Director’s October 17, 2025, memorandum, which stated that the authority to determine whether to institute trial for IPR and post-grant review (PGR) proceedings rests solely with the USPTO Director.

Practice note: The October 17 memorandum signaled a shift in procedural control and reflected a broader policy approach to discretionary denials. While the October 31 notice provides limited insight into the basis for denial, it underscores the importance of understanding the USPTO’s evolving stance on institution discretion. Practitioners and petitioners alike should monitor future developments closely, as they may impact strategic considerations for filing and defending IPRs.



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USPTO Director to decide AIA petitions

by | Oct 23, 2025 | ,

The United States Patent and Trademark Office (USPTO) issued a memorandum on October 17, 2025, titled “Director Institution of AIA Trial Proceedings,” providing updated guidance to the Patent Trial & Appeal Board regarding the standards and procedures for instituting trial proceedings under the America Invents Act (AIA), including inter partes review (IPR) and post-grant review (PGR).

Since the AIA’s enactment in 2012, the Board’s trial proceedings have become a central mechanism for challenging the validity of issued patents. The institution phase, in which the Board decides whether to proceed with a trial, has been shaped by a series of precedential decisions and evolving USPTO policies, particularly regarding discretionary denials under 35 U.S.C. §§ 314(a) and 325(d).

The October 17, 2025, memorandum states that to “improve efficiency, consistency, and adherence to the statutory requirements for institution of trial, effective October 20, 2025, the Director will determine whether to institute trial for [IPR and PGR] proceedings.” If the Director determines that review is appropriate based on discretionary, merits-based, or other considerations, the USPTO will issue a summary notice granting institution for at least one challenged claim. If the Director determines review is not appropriate, the USPTO will issue a summary notice denying institution. For cases involving novel or complex issues, the Director may issue a detailed decision or refer the matter to one or more Board judges. A three-member Board panel will conduct all instituted reviews. The memorandum also notes that the USPTO has issued more than 580 prior decisions under interim processes that offer guidance on handling of discretionary factors.



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Associational standing requires concrete, non-speculative harm

by | Oct 16, 2025 |

The US Court of Appeals for the Federal Circuit affirmed a district court decision dismissing a lawsuit against the United States Patent and Trademark Office (USPTO) for lack of associational standing since no member of the association had standing to sue. US Inventor, Inc. v. United States Patent and Trademark Office, Case No. 24-1396 (Fed. Cir. Oct. 3, 2025) (Lourie, Reyna, Stark, JJ.)

US Inventor and National Small Business United (collectively, the plaintiffs) jointly filed a petition for rulemaking at the USPTO to amend the regulations that control the USPTO’s discretion to institute inter partes review (IPR) or post-grant review (PGR) proceedings. The plaintiffs proposed five instances in which the USPTO would have no discretion to institute an IPR or PGR. Separately, the USPTO issued a request for public comments regarding institution discretion two months after the plaintiffs filed their petition.

Eventually, the USPTO denied the petition, citing redundancy with the request for public comment. The USPTO assured the plaintiffs that their request would be considered as a public comment.

In response, the plaintiffs filed a complaint in federal court claiming that the USPTO had committed three errors:

  • The USPTO’s assurance that the plaintiffs’ requests would be considered “in unspecified ‘future rulemaking’” violated its duty to conclude the matter in an appropriate amount of time, as required by the Administrative Procedure Act (APA).
  • Under the APA, the USPTO failed to state adequate grounds for denial.
  • The USPTO violated the America Invents Act (AIA) by “fail[ing] to promulgate notice-and-comment rulemaking.”

The USPTO filed a motion to dismiss, arguing that the plaintiffs lacked standing. The district court granted the motion, finding that the plaintiffs had neither organizational nor associational standing. The plaintiffs appealed.

Because the issue of associational standing was not specific to patent law, the Federal Circuit applied the law of the US Circuit Court for the District of Columbia, which reviews standing de novo.

Of the three requirements for associational standing (standing of at least one associational member, applicability of the issue to the association’s purposes, and individual member participation not required for the claim or relief), only the first was at issue.

The Federal Circuit concluded that since no member of the plaintiffs’ organizations had standing to sue, the plaintiffs themselves did not have associational standing. The Court noted that the plaintiffs had failed to claim anything more than speculative harm to any member resulting from the USPTO’s denial of plaintiffs’ petition. The Court found the “risk” of patent cancellation during an IPR or PGR proceeding insufficiently “actual or imminent” to afford any member standing to sue.

The Federal Circuit explained that a requisite third-party action outside of the plaintiffs’ control would need to occur before any harm to the plaintiffs’ members could be concretely realized. Third-party actions, including the filing of a petition for an IPR or PGR proceeding, the USPTO’s institution of such proceeding, and the USPTO’s ultimate decision in such proceeding, constitute multiple steps in the chain of events that might result in harm [...]

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The smoke has cleared – and so has your invalidity defense

by | Sep 25, 2025 | ,

The US District Court for the Northern District of Iowa issued an instructive decision clarifying the scope of statutory estoppel under the Leahy-Smith America Invents Act (AIA) following post-grant review (PGR) proceedings before the Patent Trial & Appeal Board. Intirion Corp. v. College Products, Inc., Case No. 23-cv-4023-CJW-KEM (N.D. Iowa Sept. 16, 2025) (Williams, J.)

Intirion brought a patent infringement suit against College Products, which responded by petitioning the Board for PGR, challenging the patents based on obviousness and indefiniteness. While the PGR was pending, the district court proceeded with claim construction and initially found the terms “level of smoke,” “amount of smoke,” and “dangerous condition” indefinite. Intirion moved for reconsideration, and College Products filed a motion for partial summary judgment asserting invalidity. Intirion also sought a stay of the litigation pending the PGR outcome, which the court granted.

The Board instituted review of all claims. Initially, it found that neither party had requested express construction of any terms and adopted Intirion’s interpretation that “level of smoke” and “amount of smoke” meant “merely detecting smoke,” based on Intirion’s representations in the district court. In its final written decision (FWD), the Board acknowledged the district court’s indefiniteness findings but ultimately adopted the plain and ordinary meaning of the terms, concluding that a person of ordinary skill in the art could determine appropriate thresholds using known methods. Expert testimony persuaded the Board that defining the terms by their function was sufficiently definite under patent law.

After the Board upheld the claims, the district court found that College Products was estopped under 35 U.S.C. §325(e)(2) from asserting any invalidity grounds (including indefiniteness and obviousness) that were or reasonably could have been raised during the PGR. The district court explained that the AIA established a streamlined system allowing third parties to challenge the patentability of issued claims before the Board as a quicker and more cost-effective alternative to litigation. This structure is specifically designed to prevent challengers from getting multiple bites at the apple by raising the same or similar arguments in subsequent court proceedings.

College Products argued that estoppel should not apply because it filed its motion for partial summary judgment before the Board issued its FWD. The district court rejected this argument, explaining that the statutory language provides no exception based on timing and imposes a clear bar once the Board has issued a FWD. The district court also found that College Products’ position was inconsistent with applicable case law and noted that it failed to cite any contrary authority.

The district court further explained that it had intentionally deferred ruling on College Products’ motion for partial summary judgment of invalidity pending the outcome of the PGR proceedings. Once the PTAB issued its FWDs, College Products was estopped from further challenging the validity of the patents, including through its pending summary judgment motion, because it could have raised any such indefiniteness arguments during the PGR process.

Practice note: Unlike inter partes review (IPR), during PGR a petitioner can challenge patentability on grounds [...]

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Clean Up on Aisle PTAB: Clarification of Discretionary Denial Practice

by | May 2, 2024 |

The US Patent & Trademark Office (PTO) issued a Notice of Proposed Rulemaking (NPRM) for inter partes review (IPR) and post-grant review (PGR) proceedings before the Patent Trial & Appeal Board, seeking to codify existing precedent and guidance regarding the Board’s discretionary considerations in denying IPR or PGR petitions. 89 Fed. Reg. 28693 (Apr. 19, 2024).

The NPRM follows a 2020 request for comments and an April 2023 Advance Notice of Proposed Rulemaking (ANPR) that the PTO had hoped to finalize in terms of rulemaking by fall 2023. However, proposals in the ANPR hit a snag following criticism from Congress and more than 14,500 comments from stakeholders and the public, including charges that the PTO Director was overstepping her authority.

The newly proposed rules address:

  • Briefing on motions for discretionary denial
  • Factors for discretionary denial
  • Termination and settlement agreements

Briefing on Motions for Discretionary Denial

A significant aspect of the proposal provides for a separate briefing schedule between a patent owner’s preliminary response (POPR) and a request for discretionary denial, which must be filed no later than one month prior to the deadline for the POPR for briefing on its merits. Under the proposal, the discretionary denial arguments would be excluded from the preliminary response unless otherwise authorized by the Board and are intended to avoid encroaching on the wordcount limits for briefing on the merits. Under the proposed briefing process, there would be a 10-page limit for a patent owner’s request for discretionary denial and for the petitioner opposition, and a five-page limit for the patent owner’s sur-reply.

Factors for Discretionary Denial

The proposed rules address denial of institution for “parallel petitions” or “serial petitions” to provide a framework for considering whether previously presented art or arguments provide grounds for denial. The proposed rules also address treatment of joinder petitions, particularly in relation to already instituted petitions. Parallel petitions are defined in the proposed rule as two or more petitions by the same petitioner challenging the same patent that are filed on or before the filing of a POPR to any of the petitions or on or before the due date for filing a POPR to the first petition. Serial petitions are defined as challenged claims of the same patent overlapping with those in a previously filed petition for IPR, PGR or covered business method patent review.

According to the proposed rules, a parallel petition would not be instituted without a good cause showing of why more than one petition is necessary. Factors for a good cause showing include:

  • A petitioner’s ranking of desired petitions for consideration
  • An explanation of differences and materiality between the petitions
  • The number of challenged patent claims, including those asserted by the patent owner in district court litigation
  • A priority date dispute
  • Alternative claim constructions requiring different prior art references on mutually exclusive grounds
  • Knowledge of asserted claims at the time of filing a petition
  • Complexity of the technology

Similar considerations would also apply to joinder petitions.

[...]

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Delay Is Okay: Final Written Decisions Can Be Issued After Statutory Deadline

by | Nov 30, 2023 | ,

In a matter of first impression, the US Court of Appeals for the Federal Circuit concluded that the Patent Trial & Appeal Board has the authority to issue a final written decision (FWD) in a post-grant review (PGR) proceeding after the statutory deadline has passed. Purdue Pharma L.P. v. Collegium Pharm., Inc., Case No. 22-1482 (Fed. Cir. Nov. 21, 2023) (Dyk, Hughes, Stoll, JJ.)

Purdue owns a patent directed to a pharmaceutical formulation meant to prevent or deter the abuse of opioid analgesics through the use of an aversive agent. On March 13, 2018, Collegium filed a PGR petition asserting that the patent claims were invalid. On September 24, 2019, Purdue filed a notice of bankruptcy and imposition of automatic stay, after which the Board stayed the PGR proceeding. The Board’s one-year deadline to issue an FWD under 35 U.S.C. § 326(a)(11) and 37 C.F.R. § 42.200(c) expired on October 4, 2019. After the bankruptcy court lifted the stay on the PGR proceeding on September 1, 2020, Purdue argued that the Board no longer had the authority to issue an FWD because the 18-month statutory deadline to do so had passed. The Board disagreed and issued an FWD finding the challenged claims unpatentable. Purdue appealed.

Purdue argued that the Board did not have authority to issue an FWD after the deadline established by 35 U.S.C. § 326(a)(11) and 37 C.F.R. § 42.200(c) had passed. Purdue advanced four arguments in favor of its proposed interpretation of § 326(a)(11):

  1. The use of “shall” and “requiring” deprives the Board of the authority to issue an FWD.
  2. The “negative words” of “not later than 1 year” and “by not more than 6 months” indicate a loss of authority.
  3. The statutory language in § 326(a)(11) requires PGR proceedings to be conducted “in accordance with” the Board’s jurisdictional grant in 35 U.S.C. § 6, and therefore the Board’s jurisdiction expires when the deadline in § 326(a)(11) expires.
  4. The exceptions in § 326(a)(11) for “good cause” and “joinder” demonstrate that those are the only limited instances where the Board may issue an FWD after the statutory deadline.

None of Purdue’s arguments persuaded the Federal Circuit. The Court reasoned that § 328(a) plainly requires the issuance of an FWD and that “[h]ad Congress meant to deprive the agency of power in § 326(a)(11), it knew how to do it” vis-à-vis the use of specific language, like the language it used in other sections of the America Invents Act (AIA), such as 35 U.S.C. § 315(b) and 35 U.S.C. § 321(c), both of which specifically deny agency power after a temporal deadline.

The Federal Circuit also considered the legislative history of § 316(a)(11), recognizing that Congress created PGR and inter partes review (IPR) proceedings when enacting the AIA to, among other things, replace the “lengthy and inefficient” reexamination proceeding. The Court reasoned that prohibiting an FWD after the statutory deadline would “force” parties to commence district court litigation—an act contrary to the purpose of the AIA, which [...]

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