“Settled-Expectations” Analysis May Leave Some Petitioners Feeling Unsettled
By Sue Gerber and Matt Johnson - As discretionary denials are on the rise and institution rates are declining at the PTAB (link), recent decisions from the PTAB have introduced the notion of a patent owner’s “settled expectations” as another reason for the PTAB to...
Discretionary Denial Where Inventors Petitioned for Unpatentability
By Hannah Mehrle and Matt Johnson - Coke Morgan Stewart, the acting director of the United States Patent and Trademark Office (“USPTO”), exercised discretion under 35 U.S.C. § 314(a) to deny Tessell’s (“Petitioner’s”) petition in favor of Nutanix (“Patent Owner”)....
Discretionary Denial of IPR Institution Due to Advanced Hatch-Waxman Litigation
By Nicole Prescott,* Phillip Shelton, and Matt Johnson - In a recent decision, the Patent Trial and Appeals Board (“PTAB”) exercised its discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review (“IPR”) after applying the Fintiv factors,...
Physical Products Cannot Form Basis of an IPR
By Carl Kukkonen - On May 1, 2025, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) of U.S. Patent No. 11,140,841 in the case of Aardevo North America, LLC v. Agventure B.V. The patent in question, owned by Agventure, covers...
Acting Director Denies IPR Institution Based on “Settled Expectations”
By Anthony Insogna, Sarah Geers, Matt Hertko, Andrea Jeffries, Gasper LaRosa, Jason Winchester, and Matt Johnson - The Situation: Under a new U.S. Patent and Trademark Office ("USPTO") policy issued in March 2025, pre-institution inter partes review ("IPR")...