On May 16, 2025, USPTO Acting Director Stewart issued her first four discretionary-denial decisions since announcing that the Director will decide whether to discretionarily deny inter partes review and post-grant review petitions. Each of those decisions involved IPR petitions challenging patents also asserted in parallel district court litigation. The deciding factor in each decision was whether the expected district court trial date preceded the statutory date by which the PTAB is required to issue a final written decision (“FWD”). The Acting Director denied two petitions with expected trial dates preceding the FWD date. Ericsson Inc. v. Procomm Int’l Pte. Ltd., IPR2024-01455, Paper 15 (PTAB May 16, 2025); Arm Ltd. v. Daedalus Prime LLC, IPR2025-00207, Paper 10 (PTAB May 16, 2025). And the Acting Director did not deny four petitions with expected trial dates following the FWD date. Amazon.com, Inc. v. NL Giken Inc., IPR2025-00250, Paper 14 (PTAB May 16, 2025); Twitch Interactive, Inc. v. Razdog Holdings LLC, IPR2025-00307, Paper 18 (PTAB May 16, 2025).
In the four decisions, the Acting Director provided no written analysis of any factor except the expected district court trial date relative to the FWD date and the likelihood of a stay of the district court case. The Acting Director’s decisions are consistent with recent PTAB decisions discretionarily denying a large majority of petitions where the expected district court trial date preceded the FWD date. These decisions may spur petitioners to expedite the filing of PTAB petitions to secure a FWD date earlier than the district court trial date.
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