IP UPDATE

USPTO Director to decide AIA petitions

by Amol Parikh | Oct 23, 2025 | America Invents Act, Patents

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.

Double trouble: Proposed IPR institution changes would limit duplicative proceedings

by Rick Evans | Oct 23, 2025 | America Invents Act, Patents

The United States Patent and Trademark Office (USPTO) proposed changes to the rules governing inter partes reviews (IPRs) before the Patent Trial & Appeal Board, including setting limits on use of IPR proceedings for patent claims that have already been challenged in a prior proceeding. According to the USPTO, the proposal is aimed at preventing duplicative litigation against patent holders and promoting fairness, efficiency, and predictability in patent disputes.

The Notice of Proposed Rulemaking introduces changes to 37 C.F.R. § 42.108 that would bar the institution of IPRs in cases where:

A petitioner refuses to stipulate that it won’t pursue invalidity challenges under §§ 102 or 103 in other venues, such as a district court or the US International Trade Commission (ITC).
The challenged claims were found not invalid or not unpatentable in a prior district court, ITC, Board reexamination, or Federal Circuit proceeding.
Parallel litigation involving the patent will likely reach a decision before the final IPR written decision.

The proposed rule would provide an exception to the proposed IPR limitations in “extraordinary circumstances,” such as a bad faith institution of a previous IPR or a substantial change in law that renders a prior challenge irrelevant.

The USPTO explained that the proposed changes will offer greater certainty for patent owners by reducing serial validity challenges, improving judicial efficiency by minimizing duplicative proceedings, and facilitating lower litigation costs and stronger investment incentives. The USPTO noted that the changes would benefit smaller technology companies, which often lack the litigation resources of larger companies and are more vulnerable to the effects of weaker patent rights.

The proposed changes would represent a significant shift in the availability of IPR for petitioners and would alter the timing and strategy of decisions about whether to pursue an IPR. Comments on the proposed rule changes are due by November 17, 2025, and can be submitted via the federal eRulemaking portal.

Power outage: Assignment doesn’t include future improvements

by Sydney E. McDermott | Oct 23, 2025 | Patents

In a pair of related rulings, the US Court of Appeals for the Federal Circuit reviewed two decisions from two different agencies involving the same patent. The Court ultimately found that the International Trade Commission (ITC) correctly identified the owner of the asserted patent, and that the Patent Trial & Appeal Board correctly determined that the asserted patent was unpatentable. Causam Enterprises, Inc. v. Int’l Trade Comm’n, Case No. 23-1769 (Fed. Cir. Oct. 15, 2025) (Taranto, Chen, Stoll, JJ.); Causam Enterprises, Inc. v. ecobee Techs. ULC, Case No. 24-1958 (Fed. Cir. Oct. 15, 2025) (Taranto, Chen, Stoll, JJ.)

Causam initiated a complaint before the ITC, alleging that certain importers infringed its patent directed to technology for reducing electrical utilities power demands. The asserted patent claims priority as a continuation-in-part of a parent patent application. Although the face of the asserted patent lists Causam as the assignee, the parent application was assigned to another entity a decade earlier, along with “all patents which may be granted therefor” and “all divisions, reissues, continuations, and extensions thereof.” The assignment did not expressly include continuations-in-part.

The chief administrative law judge (ALJ) issued an initial determination that Causam was not the owner of the asserted patent and that no infringement had occurred. Causam subsequently requested a review of the initial determination by the full Commission. The Commission adopted the ALJ’s findings of noninfringement but declined to adopt the findings regarding ownership. Causam appealed.

Ownership of a patent is a threshold requirement for asserting Article III standing, and the complainant bears the burden of establishing standing in the pleadings. On appeal, the Commission and the ITC respondents argued that ownership of the asserted patent did not need to be decided for standing purposes as Causam had pleaded ownership in its complaint. The Federal Circuit disagreed, emphasizing that, as an Article III court, it is required to consider Article III’s standing requirements, even if the ITC is not. Because the issue turned on contract interpretation and did not require underlying factual findings, the Federal Circuit reviewed the standing issue de novo.

The Federal Circuit ultimately determined that the omission of the term “continuation-in-part” from the assignment agreement meant that the asserted patent was not included in the assignment and thus Causam had ownership of the asserted patent. The ITC respondents argued that the inclusion of “continuation” language was sufficient to encompass both continuations and continuations-in-part. The Court rejected this argument, noting that adopting such a position would effectively “insert words into the contract that the parties never agreed to,” particularly because continuations and continuations-in-part (which by definition include new matter not found in the priority application) are widely understood to be distinct concepts within patent law.

The Federal Circuit noted that such a distinction is especially significant in the context of patent assignments. In the case of continuations, recordation of the assignment of the parent patent or application is effective as to a child patent. In contrast, the same is not true for a continuation-in-part, meaning that [...]

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We’ve got standards: No issue preclusion for facts that must be proven under higher standard

by Ashley K. Justice | Oct 23, 2025 | Patents

The US Court of Appeals for the Federal Circuit vacated a summary judgment finding claims invalid, on grounds that the district court erred in applying issue preclusion based on factual findings in an inter partes review (IPR) that held other claims invalid. Inland Diamond Products Co. v. Cherry Optical Inc., Case No. 24-1106 (Fed. Cir. Oct. 15, 2025) (Prost, Reyna, Chen, JJ.)

In 2020, Inland Diamond filed a patent infringement suit against Cherry Optical asserting dependent claims of two patents. A year prior, in 2019, the Patent Trial & Appeal Board had determined that the independent claims on which the asserted dependent claims depended were unpatentable in two IPRs. During these 2019 IPRs, the Board determined that the claims now asserted at the district court were not unpatentable. The Board decision was not appealed.

The district court granted Cherry’s motion for summary judgment that the asserted claims were invalid for obviousness. The district court concluded that issue preclusion applied, so Cherry did not have to perform an independent invalidity analysis for limitations of what the district court termed unpatentable claims contained in the asserted claims. The district court’s analysis focused on limitations added by the asserted claims. The district court permitted Inland to defend the asserted claims’ validity because those claims had been adjudicated as not unpatentable in the 2019 IPRs.

Relying on issue preclusion and Cherry’s asserted prior art, the district court granted summary judgment that the asserted claims were invalid for obviousness. Inland appealed.

The Federal Circuit reversed, explaining that the district court erred in applying issue preclusion based on two 2024 decisions, ParkerVision and Kroy. In both decisions, the Federal Circuit reversed the district court’s holding for erroneous application of issue preclusion based on the Board’s factual findings. The Federal Circuit explained that facts proven under the Board’s then-lower standard of proof for unpatentability (preponderance of the evidence) cannot have issue-preclusive effects under the district court’s clear and convincing standard. The Federal Circuit distinguished cases where a claim has already been found unpatentable or invalid; in those situations, issue preclusion bars the assertion of those claims.

Applying this principle, the Federal Circuit reasoned that since the prevailing standard of proof for challenging patentability in 2019 in an IPR was lower and Inland’s asserted claims had never been determined invalid or unpatentable, the district court erred in giving issue-preclusive effect to the Board’s 2019 findings. To grant summary judgment, a district court must find that the patent challenger carried its burden under the clear and convincing standard separate from the Board’s factual findings. The Federal Circuit noted that to meet the higher standard, the evidence may be the same or similar to the evidence that led the Board to find that certain claims were unpatentable by a preponderance of the evidence.

Associational standing requires concrete, non-speculative harm

by Taylor MacDonald | Oct 16, 2025 | Patents

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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