IP LITIGATION UPDATE

A copy of the IP Litigation Update can be found HERE.

August 5, 2025

IP Litigation Update

On behalf of FisherBroyles’ Intellectual Property litigation partners, I introduce our latest IP Litigation Update. You may learn more about our IP Litigation group here: https://www.fisherbroyles.com/areas-of-practice/intellectual-property-litigation. If you have questions, please contact your relationship partner or me.

Thank you. Alastair Warr, Chair, Intellectual Property Litigation.
[email protected], Direct: +1.371.407.5260

Will patent owners see enhanced value in their patent portfolios?

For more than a decade, patent owners have found it more difficult to enforce their patents. Inter partes reviews (“IPRs”) before the Patent Trial and Appeal Board (“PTAB”) have proved to be a proverbial killing field with close to 70% of all challenged patents found invalid. Perhaps that trend is starting to change.

Late in March, the USPTO rescinded its 2022 memorandum that had narrowed the use of discretionary denials for IPRs based on the relationship between PTAB proceedings and parallel district court litigation. The PTAB returns to a holistic and flexible application of the Fintiv factors, e.g., the timing of trials, overlap of issues, and parallel proceedings. The PTAB has introduced new briefing procedures, allowing patent owners to file discretionary denial briefs addressing discretionary denial issues within two months of receiving the notice of filing date. The briefs are limited to 14,000 words. The director of the PTAB and a panel of PTAB judges will decide the discretionary denial before the merits of the case. Parties may address a broader range of considerations, including prior adjudications, changes in law, the strength of unpatentability challenges, the patent owner’s settled expectations, and economic or public health interests. For example, in late July 2025, the Acting Director of the USPTO denied IPR institution where the challenged patent had been in force for over six years, thereby creating a strong settled expectation, and the petitioner failed to provide persuasive reasoning why IPR was appropriate. Similar recent decisions also suggest the PTAB will be more likely to deny institution the longer the patent has been force, thereby creating an incentive IPR challenges within 6 years of the date of issuance.

These changes offer potential benefits for patent owners. One potential benefit is an increased opportunity for patent owners to avoid IPRs. The PTAB’s willingness to consider “settled expectations,” such as the length of time patents have been in force, can benefit patent owners with older, established patents. But, the shift towards a case-by-case analysis may also introduce greater uncertainty. The new briefing procedure adds cost and complexity. If the PTAB becomes less likely to institute IPRs, it could increase the perceived strength of newly issued patents that, in turn, could make patents more valuable for licensing or enforcement. Patent owners may feel more secure in their patent rights.