By Scott Burow and Hayden Kunz
So, what’s happening at the PTAB? A new process for considering discretionary denial, the particularity requirement, constitutional challenges to IPRs, and more!
New Bifurcated Process → Discretionary Director Review → Denial of Petitions. Motorola Solutions, Inc. v. Stellar LLC, IPR2024-01205,-01206,-01207,-01208 (Paper 19) (March 28, 2025) (Coke Morgan Stewart, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO) (granting director review, vacating previous institution, and denying institution of several petitions finding that the Board failed to give enough weight to the substantial investment in the district court litigation and gave too much weight to the Sotera stipulation (an agreement not to raise in district court grounds that could have been raised in the petition)).
Know your deadlines! Google LLC v. Metarail, Inc., IPR2024-01269, Paper 10 (April 2, 2025) (per curiam) (granting Petitioner’s motion to expunge Patent Owner’s Brief Requesting Discretionary Denial under the new Interim Procedure Memorandum because the request was untimely).
No Particularity, No Institution. Arashi Vision LLC v. GoPro, Inc., IPR2024-01434, (Paper 9) (March 31, 2025) (Bisk, joined by McGraw and Kinder) (denying institution finding that a petition based on 24 distinct grounds raised against a single patent claim without particularity in the analysis burdensPatent Owner unduly and makes inefficient use of the Board’s resources).
IPRs Do Not Violate Constitutional Due Process. Mediatek, Inc. v. Parkervision, Inc., IPR2025-00030, (Paper 9) (March 31, 2025) (Grossman, joined by Zecker and Ahmed) (granting institution and rejecting Patent Owner’s myriad of constitutional due process arguments finding that they lack authority, evidence, or persuasive argument).
A good combination can win the day! Quectel Wireless Solutions Co. Ltd. V. Koninklijke Philips N. V., IPR2021-00563, Paper 36 (April 1, 2025) (Turner, joined by Mormeester and Cass) (finding the claim at issue unpatentable because, although Petitioner’s references were “directed to different problems, with different solutions”, one of ordinary skill in the art could have combined aspects of each reference to improve the resulting system).
Don’t just recycle, try something new. Intel Corp. v. Interdigital, Inc., IPR2024-01441, Paper 13 (April 1, 2025) (Murray, joined by Lee and Droesch) (denying institution because Petitioner presented substantially the same art and arguments previously analyzed by the Office during prosecution, and failed to show the Office erred during prosecution).
As a leader in post-issuance proceedings, Banner Witcoff is committed to staying on top of the latest developments at the Patent Trial and Appeal Board (PTAB). This post is part of our PTAB Highlights series, a regular summary of recent PTAB decisions designed to keep you up-to-date and informed of rulings affecting this constantly evolving area of the law.
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Banner Witcoff’s PTAB Highlights are provided as information of general interest. They are not intended to offer legal advice nor do they create an attorney-client relationship.
Posted: April 14, 2025
