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AIA reviews: An alternative to litigation, not a second chance

by Kelsey Wun | May 28, 2026 | America Invents Act, Patents

Addressing the scope of discretionary institution under the America Invents Act (AIA), the United States Patent and Trademark Office (USPTO) denied institution of inter partes review (IPR), concluding that the petitioner was attempting to use the Patent Trial & Appeal Board as a “second bite at the apple” after unsuccessfully litigating substantially similar invalidity issues in district court, contrary to the AIA’s purpose of providing a streamlined alternative to litigation. Magnolia Medical Technologies, Inc. v. Kurin, Inc., IPR2026-00097, Paper 17 (Director May 14, 2026).

Magnolia challenged the validity of Kurin’s patent directed to a blood-testing device in district court. After the district court excluded Magnolia’s invalidity expert based on disclosure deficiencies related to claim construction and a jury subsequently found the patent not invalid, Magnolia filed an IPR petition asserting substantially similar anticipation and obviousness grounds. The Director denied institution, concluding that Magnolia had already had a full and fair opportunity to litigate those issues in district court and was improperly attempting to relitigate them before the Board.

The Director explained that Congress created IPRs and post-grant reviews (PGRs) under the AIA to provide streamlined and cost-effective alternatives to district court litigation, not to facilitate repetitive validity challenges or expand parallel litigation. The decision noted that, in practice, many petitioners pursue AIA review alongside district court litigation, sometimes asserting overlapping invalidity theories or taking inconsistent positions across forums, thereby increasing costs and burdening both patent owners and the USPTO.

The Director further emphasized that AIA proceedings serve broader public-interest objectives beyond resolving private disputes, including promoting efficiency, fairness, predictability, and the integrity of the patent system. In exercising discretionary institution authority, the USPTO considers factors such as examiner error, inconsistent positions across forums, settled expectations, and whether institution would represent an appropriate use of USPTO resources.

Applying those principles, the Director concluded that Magnolia’s petition fell outside the intended purpose of AIA review because Magnolia was not using the Board as an alternative forum for resolving validity disputes, but instead to relitigate substantially similar invalidity theories after an unfavorable outcome in district court. The Director emphasized that Magnolia had already contested validity in district court using anticipation and obviousness grounds similar to those asserted in the petition and that the parties had expended substantial resources litigating those issues.

The Director rejected Magnolia’s argument that institution was warranted because no tribunal had adjudicated the merits of its anticipation and obviousness theories after the district court excluded its expert testimony. According to the Director, Magnolia had a full and fair opportunity to litigate those issues, and the exclusion of its expert resulted from deficiencies within Magnolia’s control. Permitting institution under those circumstances, the Director explained, would improperly allow Magnolia to obtain a “second bite at the apple” before the USPTO.

In discussing the public-interest considerations that inform discretionary institution decisions, the Director highlighted several precedential and informative decisions addressing issues such as substantial examiner error, inconsistent positions across forums, foreign sovereign petitioners, and settled expectations. The Director explained that these decisions reflect [...]

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Shocking: Fifth Circuit affirms disgorgement award based on willful infringement

by Tyler Jackson | May 21, 2026 | Trademarks

The US Court of Appeals for the Fifth Circuit affirmed a finding of trademark infringement and unfair competition under the Lanham Act and Texas law, upholding an award of profits based on willful infringement. The Court vacated and remanded the permanent injunction as overbroad, however. Trojan Battery Co., L.L.C. v. Golf Carts of Cypress, L.L.C., Case No. 25-20243 (5th Cir. May 8, 2026) (Jones, Barksdale, Stewart, JJ.)

Trojan Battery has sold deep-cycle batteries, including batteries commonly used in golf carts, under the TROJAN mark for decades. It owns multiple federal registrations covering the Trojan name and related marks, including TROJAN for use on electric storage batteries; TROJAN BATTERY SALES for use in connection with retail and wholesale store services and wholesale distributorships; and the following graphic mark for use on electric storage batteries, deep-cycle electric storage batteries, and lithium-ion batteries:

Golf Carts of Cypress (GCC) and Trojan EV (collectively, defendants), both owned by Federico Nell, entered the golf cart market between 2019 and 2020. Trojan EV marketed carts under the “Trojan-EV” name, and GCC sold those carts (bearing the below logo mark) alongside carts containing authentic TROJAN batteries.

Trojan Battery sued for trademark infringement and unfair competition. Following a five-day bench trial, the district court found liability, awarded disgorgement of defendants’ profits, and entered a permanent injunction. Defendants appealed.

Defendants challenged the district court’s likelihood-of-confusion analysis. The Fifth Circuit rejected that challenge, emphasizing that the district court did not clearly err in concluding that confusion was likely under the Fifth Circuit’s multifactor test. The Fifth Circuit acknowledged that the district court overstated the evidence of actual confusion. A single misdirected inquiry and several additional instances over more than two years were insufficient, standing alone, to show meaningful marketplace confusion. Nonetheless, the absence of convincing evidence on that factor was not dispositive.

Critically, the Fifth Circuit upheld the district court’s finding of intent. The trial court discredited Nell’s testimony that he was unaware of Trojan Battery’s marks and reasonably inferred that defendants adopted TROJAN-EV to capitalize on the senior mark’s goodwill. That finding weighed heavily in favor of confusion and supported the ultimate liability determination. Considering the record as a whole, the Court concluded that most factors favored Trojan Battery and affirmed the infringement finding.

The Fifth Circuit also affirmed the award of defendants’ profits. Applying the Lanham Act’s equitable framework, the Court found no abuse of discretion in awarding disgorgement as a deterrent against willful infringement. The Fifth Circuit endorsed the district court’s use of the Lanham Act’s burden-shifting approach to calculate profits, under which the plaintiff establishes gross sales and the defendant bears the burden of proving deductible expenses. Given the finding of willful infringement, the Court agreed that disgorgement was an appropriate remedy, particularly where injunctive relief alone might not deter future misconduct.

The Fifth Circuit reached a different conclusion as to the permanent injunction. Although injunctive relief [...]

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Personal jurisdiction: Are cease-and-desist letters enough?

by Jolie B. Schenerman | Apr 30, 2026 | Trademarks

In a decision clarifying how certain pre litigation enforcement efforts can establish personal jurisdiction, the US Court of Appeals for the Eleventh Circuit reversed the dismissal of Lanham Act and tortious interference claims for lack of personal jurisdiction, concluding that cease and desist letters sent into the jurisdiction satisfied the minimum contacts requirement and did not offend due process. Frida Kahlo Corporation v. Mara Cristina Teresa Romeo Pinedo, Case No. 24-10293 (11th Cir. Apr. 17, 2026) (Luck, Lagoa, Abudu, JJ.)

Frida Kahlo and Frida Kahlo Investments (collectively, Kahlo) manage and license a portfolio of trademarks and publicity rights associated with the artist Frida Kahlo. Kahlo sued Familia Kahlo and Mara Cristina Teresa Romeo Pinedo (collectively, Pinedo) alleging tortious interference and Lanham Act violations arising from Pinedo’s efforts to halt a traveling Frida Kahlo exhibition and related merchandise.

Central to the dispute were cease and desist letters sent by Pinedo to Kahlo’s Florida based business partners. The letters asserted that Pinedo held superior rights to Frida Kahlo’s name, likeness, and trademarks and threatened legal action if the recipients continued their involvement with Kahlo. Kahlo alleged those claims were false and caused business partners to withdraw or hesitate, disrupting Kahlo’s licensing relationships.

Kahlo filed suit in Florida. Pinedo moved to dismiss for lack of personal jurisdiction. The district court granted the motion, concluding that Florida’s corporate shield doctrine protected Pinedo from jurisdiction and that, in any event, Pinedo lacked sufficient minimum contacts with Florida. Kahlo appealed.

The Eleventh Circuit reversed, concluding first that the corporate shield doctrine did not bar jurisdiction over Pinedo. The Court focused on the language of the cease and desist letters, which expressly identified Pinedo as the “heiress of the painter Frida Kahlo” and stated that the letters were sent “in our capacity as representatives of Mara Cristina Teresa Romeo Pinedo.” The Court found that those representations showed that Maria Pinedo was acting in her personal capacity, not merely as a corporate agent. As a result, the corporate shield doctrine, which can protect corporate officers from jurisdiction based solely on acts performed for a corporation, did not apply. Because the doctrine was inapplicable, Pinedo was subject to Florida’s long arm statute, which permits jurisdiction where a nonresident commits a tortious act outside the state that causes injury within Florida.

The Eleventh Circuit next addressed whether exercising specific personal jurisdiction would comport with due process. The Court answered in the affirmative, explaining that Pinedo intentionally directed conduct into Florida by sending cease and desist letters to Florida entities. The alleged tortious interference claims arose directly from those communications, satisfying the relatedness requirement for specific jurisdiction.

The Eleventh Circuit also found purposeful availment because Pinedo plausibly alleged an intentional tort, the letters were expressly sent to Florida entities, and it was reasonable for Pinedo to anticipate having to defend itself in Florida based on its actions.

Finally, the Eleventh Circuit concluded that Pinedo failed to make a compelling case that exercising jurisdiction would violate traditional notions of fair play and [...]

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Patent disclosure erases trade secret protection

by Hannah Hurley | Apr 30, 2026 | Patents, Trade Secrets

Addressing the boundary between patent disclosures and trade secret protection, the US Court of Appeals for the Federal Circuit reversed a jury’s findings of trade secret misappropriation, breach of contract, and improper inventorship, concluding that the asserted “trade secrets” were generally known and therefore not protectable under California law. The Court affirmed, however, a $1 million statutory damages award for trademark counterfeiting. International Medical Devices, Inc. v. Cornell, Case Nos. 25 1580; 1605 (Fed. Cir. Apr. 17, 2026) (Dyk, Reyna, Taranto, JJ.)

International Medical Devices, Menova International, and Dr. James Elist (collectively, the plaintiffs) manufacture and sell the Penuma® cosmetic penile implant. The plaintiffs sued Dr. Robert Cornell and associated individuals and entities after Cornell attended a Penuma® surgical training session under a nondisclosure agreement (NDA) and later helped develop a competing implant. The plaintiffs asserted claims for misappropriation of trade secrets, breach of the NDA, trademark counterfeiting based on unauthorized use of the Penuma® mark, and invalidity of two cosmetic implant patents for failure to name Elist as an inventor.

A jury found for the plaintiffs on all claims. After a bench trial on remedies, the district court awarded more than $17 million in trade secret and exemplary damages, entered a permanent injunction, and awarded $1 million in statutory damages for counterfeiting. Cornell appealed.

The Federal Circuit reversed the trade secret verdict in its entirety, concluding that none of the asserted trade secrets were protectable under California law. The Court concluded that the alleged technical trade secrets were disclosed in publicly available patents and thus were “generally known” as a matter of law.

In doing so, the Federal Circuit reaffirmed the long-standing principle that “that which is disclosed in a patent cannot be a trade secret.” Once information enters the public domain through patent disclosures, it cannot later be reclaimed as confidential business information through trade secret law.

The plaintiffs’ remaining alleged trade secret (a list of surgical instruments) fared no better. The Federal Circuit found that the list had been emailed to the defendants without any confidentiality designation or obligation, defeating any claim that reasonable measures were taken to maintain its secrecy.

Because the plaintiffs failed to identify any confidential information beyond the alleged trade secrets, the Federal Circuit also reversed the breach of contract verdict. The NDA expressly excluded information that was “generally available to the public,” and the Court found that an NDA cannot transform public domain information into protected confidential material.

The Federal Circuit reached a different conclusion on trademark counterfeiting, however, and affirmed the jury’s finding and the $1 million statutory damages award. The Court explained that the evidence showed that Cornell had advertised and offered Penuma® implants without authorization. Cornell argued that the Penuma® mark was registered only for goods, not services, and therefore could not support a counterfeiting claim tied to surgical procedures. The Court rejected that argument, concluding there was sufficient evidence that Cornell offered the Penuma® implant itself as a good, not merely a medical service.

Finally, the Federal Circuit [...]

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How ex parte is ex parte reexam?

by Lisette Donewald | Apr 16, 2026 | Patents

Under a new procedure, announced in an Official Gazette Notice dated April 1, 2026, patent owners may now provide input before the United States Patent and Trademark Office decides whether to initiate an ex parte reexamination proceeding. Previously, while patent owners could participate after reexamination was ordered, they had no opportunity to submit arguments before the Office determined whether a request raised a substantial new question of patentability (SNQ). Under the new policy, patent owners may submit a limited pre-order paper to inform that threshold determination.

Ex parte reexamination is an administrative mechanism that allows third parties to challenge patent validity outside of court. Unlike inter partes review and post-grant review – both adjudicated by Patent Trial and Appeal Board judges – ex parte reexaminations are handled by the Central Reexamination Unit and initiation there turns on whether or not the request raises an SNQ.

The new procedure introduces an optional patent owner pre-order paper that must be filed within 30 days of service of the reexam request, with no extensions available. The submission is limited to 30 pages and must focus on why the cited prior art does not raise an SNQ. Supporting declarations are permitted and do not count toward the page limit, but incorporation by reference is not allowed.

The notice also places important limits on the scope of these submissions. The patent owner’s paper must be directed only to the issues raised in the request and should not address matters outside that scope. For example, the Office indicates that arguments regarding discretionary denial under 35 U.S.C. § 325(d) are not part of the SNQ determination and therefore should not be included.

Requesters have limited ability to respond to a patent owner’s pre-order paper. While responses are not ordinarily permitted, a requester may petition to file a reply (limited to 10 pages). Any such reply must be filed within 15 days of service of the patent owner’s paper and requires payment of a fee.

These changes may shift the dynamics of ex parte reexamination practice. Historically, institution decisions were made based solely on the requester’s submission. The new procedure allows patent owners to present arguments earlier in the process, potentially assisting the Office in evaluating whether the request satisfies the SNQ standard before ordering reexamination.

For challengers, this change increases the importance of the initial request. Requests should be drafted with the expectation that the patent owner may respond before institution and that opportunities to reply will be limited.

“X” marks the spot: A single DuPont factor may be dispositive

by Tyler Jackson | Apr 16, 2026 | Trademarks

The US Court of Appeals for the Federal Circuit affirmed dismissal of a trademark opposition, concluding that a single DuPont factor may be sufficient on its own to support a finding of no likelihood of confusion. Fuente Mktg. Ltd. v. Vaporous Techs., LLC, Case No. 24-1460 (Fed. Cir. April 8, 2026) (Prost, Taranto, Hughes, JJ.)

Fuente Marketing and Vaporous Technologies both sell smoking related products. Fuente owns two standard character trademark registrations for the letter “X,” used in connection with cigars and related accessories. Vaporous sought to register a highly stylized design mark for use with its vaping products. The parties stipulated that Vaporous’ mark consisted of “an abstract stick figure consisting of two diagonal intersecting lines in the shape of a wide stylized letter ‘X’ with a shaded circle above.”

Fuente opposed the application at the Trademark Trial and Appeal Board (TTAB), arguing that Vaporous’ mark was likely to cause confusion with Fuente’s “X” marks. Applying the DuPont factors, the Trademark Trial & Appeal Board dismissed the opposition, concluding that there was no likelihood of confusion. Fuente appealed.

The Federal Circuit reviewed the Board’s factual findings for substantial evidence and its ultimate likelihood of confusion determination de novo. Fuente challenged the Board’s analysis of two DuPont factors and argued that the Board improperly weighed the factors as a whole.

The Federal Circuit focused on the first DuPont factor, which evaluates the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. The court found that substantial evidence supported the Board’s finding that this factor weighed heavily against a likelihood of confusion. The Federal Circuit agreed that consumers were more likely to perceive Vaporous’ mark as a stylized stick figure rather than the letter “X.” Unlike Fuente’s standard character mark, Vaporous’ design mark did not sound like the letter “X” as it had no pronunciation, and it incorporated prominent visual features – including a shaded circle comprising roughly one fifth of the mark – that were “not a minor or unnoticeable feature.”

Although the Board found that the remaining DuPont factors were neutral or favored Fuente, the Federal Circuit explained that it could “discern the Board’s path to dismissal” and affirmed the conclusion that in a case like this one DuPont factor was sufficient to establish dissimilarity between the marks. The Court emphasized that a likelihood of confusion analysis is a balancing test, and no minimum number of factors must favor one party.

Practice note: This decision reinforces that a single DuPont factor, particularly the dissimilarity of the marks, may be dispositive of likelihood of confusion. Parties should not assume that favorable findings on other factors can overcome a clear lack of similarity in appearance, sound, connotation, or commercial impression.

Settled means settled: Broad settlement release equates to res judicata

by Kavya Rallabhandi | Apr 16, 2026 | Trademarks

The US Court of Appeals for the Fourth Circuit affirmed a summary judgment decision, concluding that an intellectual property owner’s claims were barred by the scope of a settlement agreement resolving earlier state court litigation between the parties. Clear Touch Interactive, Inc. v. The Ockers Co. et al., Nos. 25-1304, 25-1374 (4th Cir. Apr. 1, 2026) (Wynn, Harris, JJ.) (Rushing, J. concurring in part and dissenting in part).

Clear Touch, a designer and manufacturer of interactive technology products, entered into exclusive reseller agreements with information and communications technology reseller Ockers in 2014. After Clear Touch revoked Ockers’ exclusivity in 2017, Ockers began developing a competing product called TouchView. Clear Touch terminated Ockers as a reseller in 2019. The following year, Ockers filed suit in South Carolina state court alleging breach of contract and asserting various tort, trade secret, defamation, and civil conspiracy claims.

In June 2021, the parties resolved the state court action through a settlement agreement that dismissed the case with prejudice and included a broad mutual release of all claims and counterclaims – known or unknown – that were brought or could have been brought and that arose out of or related to the subject matter of the lawsuit.

Despite that settlement, Clear Touch filed a federal action one month later against Ockers, two of its officers (John J. Houser and Jason Houser), and TouchView Interactive, asserting claims for trademark infringement, trade secret misappropriation, and unfair competition based on the TouchView product. The defendants moved for judgment on the pleadings, arguing that the settlement agreement and the state court’s dismissal with prejudice barred Clear Touch’s claims.

The district court initially allowed some claims to proceed, including certain Lanham Act claims and claims against TouchView Interactive, but dismissed the remainder. After discovery, however, the court revisited the preclusion issue and granted summary judgment to Ockers and its officers, concluding that all of Clear Touch’s remaining claims were barred by res judicata. The district court also granted summary judgment to TouchView Interactive, finding it to be a shell entity with no commercial activity. Following a jury verdict in favor of Ockers, Clear Touch appealed.

Clear Touch challenged the district court’s res judicata determination, arguing both substantive error and procedural error under Rule 54(b). The Fourth Circuit rejected both arguments. Substantively, the Fourth Circuit held that Clear Touch failed to create a genuine dispute regarding the settlement agreement’s plain language or the parties’ mutual intent to release all claims, including those that could have been brought, arising from the same operative facts. Even when viewed in the light most favorable to Clear Touch, the federal claims were precluded because they could have been asserted as counterclaims in the prior state court action, which had been dismissed with prejudice.

Procedurally, the Fourth Circuit found no abuse of discretion in the district court’s decision to revisit its earlier rulings. Rule 54(b) permits revision of nonfinal orders when new evidence emerges or a legal error becomes apparent. Here, supplemental evidence showed that Clear Touch [...]

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Muddy paws? Franchisor’s unclean hands precludes full equitable relief

by Jolie B. Schenerman | Apr 2, 2026 | Trade Secrets, Trademarks

The US Court of Appeals for the Sixth Circuit affirmed a district court’s partial denial of a franchisor’s request for a preliminary injunction, finding that the franchisor’s inequitable conduct barred broader injunctive relief, even where the franchisor showed a likelihood of success on certain claims. Fetch! Pet Care, Inc. v. Atomic Pawz Inc., Case No. 25-1638 (6th Cir. Mar. 20, 2026) (Gibbons, Larsen, Murphy, JJ.)

Fetch! sued several former franchisee locations for breach of contract, trademark infringement, and trade secret misappropriation after the franchisees stopped paying royalties, downloaded client contact information, prepared transition plans, and continued operating competing businesses following termination of system access. Fetch! sought a temporary restraining order and then a preliminary injunction to bar operation of the competing businesses, use of alleged trade secrets, infringement of its registered trademarks, and interference with its business relationships.

The district court granted limited relief prohibiting use of Fetch!’s trademarks and restricting communications with existing Fetch! franchisees but declined to enjoin the defendants from continuing to operate competing businesses. The court concluded that although Fetch! was likely to succeed on certain claims, equitable relief was limited by Fetch!’s own conduct, including evidence that it aggressively marketed and sold its “2.0” franchise model while obscuring material differences from its legacy “1.0” model, and that it cut off certain franchisees’ system access under disputed circumstances. Fetch! appealed.

The Sixth Circuit emphasized that a preliminary injunction is an extraordinary equitable remedy and that equitable doctrines, including unclean hands, may independently bar relief. The Court agreed that the record supported a finding that Fetch!’s conduct in marketing and selling its 2.0 and managed-services franchises (particularly Fetch!’s removal of distinctions in disclosure materials and aggressive profitability representations) could constitute bad faith sufficient to deny broader injunctive relief.

The Sixth Circuit also addressed the three legacy 1.0 franchisees for which the district court had not applied unclean hands. Affirming on an alternative ground, the Court found that unclean hands likewise barred injunctive relief as to those defendants. The Court relied on evidence that Fetch! terminated or restricted their system access while they were current on payments and before they began operating competing businesses, and that Fetch! may have failed to comply with applicable state franchise law requirements governing notice and opportunity to cure.

Although it affirmed on unclean hands, the Sixth Circuit clarified aspects of its preliminary injunction jurisprudence:

It rejected the district court’s suggestion that a heightened showing of irreparable harm applies when claims are subject to arbitration, confirming that the traditional four-factor test governs.
It found that the district court erred in applying a clear-and-convincing standard for irreparable harm rather than the federal standard requiring a likelihood of irreparable injury.
It explained that competitive harms, such as loss of goodwill and customer relationships, can qualify as irreparable precisely because they are difficult to quantify.

Because Fetch!’s inequitable conduct supported denial of broader relief, the Sixth Circuit affirmed the district court’s refusal to enjoin the defendants’ competing operations while leaving in place the narrower [...]

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Too late to help: Inventorship fix fails to revive forfeited argument

by Amit Kumar Saha, PhD | Mar 19, 2026 | Patents

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board, concluding that the retroactive effect of a correction of inventorship under 35 U.S.C. § 256 does not bar the application of forfeiture principles in inter partes review (IPR) proceedings, and that a patent owner that fails to timely raise an antedating theory during an IPR may forfeit reliance on a later corrected inventorship to resurrect that theory. Implicit, LLC v. Sonos, Inc., Case Nos. 20-1173; -1174 (Fed. Cir. Mar. 9, 2026) (Taranto, Stoll, Cunningham, JJ.)

Implicit owns patents directed to content rendering that originally named Edward Balassanian and Scott Bradley as co-inventors. Sonos filed IPR petitions against both patents, asserting unpatentability under 35 U.S.C. §§ 102 and 103, primarily based on Janevski, which had an effective prior art date of December 11, 2001.

To avoid Janevski as prior art, Implicit argued that the inventions were conceived and reduced to practice before December 11, 2001. It contended that Balassanian and Bradley conceived of the inventions and collaborated with another engineer, Guy Carpenter, to implement the invention prior to December 2001. Implicit argued that Carpenter’s work inured to the benefit of the named inventors, thereby antedating Janevski. The Board rejected Implicit’s argument and found the challenged claims unpatentable as anticipated or obvious over Janevski. The Board found Implicit’s evidence insufficient to establish conception and communication of the invention by Carpenter in a manner that would support an earlier reduction to practice.

Following the Federal Circuit’s and Supreme Court’s decisions in Arthrex v. Smith & Nephew addressing the Appointments Clause as applied to IPR proceedings, the case was remanded to permit Director review. While proceedings were ongoing, Implicit sought correction of inventorship under 35 U.S.C. § 256 to add Carpenter as a co-inventor. The United States Patent & Trademark Office (USPTO) granted the request and issued certificates of correction in August 2022. The Federal Circuit remanded the case to the Board to determine what impact, if any, the corrections had on the prior final written decisions. The Board concluded that equitable doctrines, including forfeiture, precluded Implicit from relying on the corrected inventorship to advance a new antedating theory. Implicit appealed.

The appeal presented two principal questions:

Whether the retroactive effect of a correction of inventorship under § 256 forecloses application of forfeiture principles in an IPR proceeding.
Whether the Board abused its discretion in finding that Implicit forfeited its right to assert a new antedating theory based on corrected inventorship.

Implicit argued that § 256 contains no temporal limitation and that corrections operate retroactively, requiring the Board to revisit its unpatentability determinations once Carpenter was added as an inventor. Sonos and the USPTO countered that Implicit had litigated the IPRs on a single inventorship theory and waited until after adverse final written decisions to change course.

The Federal Circuit affirmed on both grounds.

First, the Federal Circuit found that forfeiture principles may apply notwithstanding the retroactive effect of § 256. Although [...]

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

by Lauren Hong | Mar 19, 2026 | Patents

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.