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2.05.26
The PTAB Review – January 2026
The January 2026 issue of The PTAB Review discusses notable developments at the PTAB, including changes to institution procedures, and precedential and informative decisions, explores several appellate decisions relevant to PTAB trials, and examines potential rule changes submitted for comment.
Alerts
6.12.25
Patent Office Denial of “Late” Inter Partes Review Petitions Changes Expectations
On June 6, 2025, the acting Director of the U.S. Patent and Trademark Office (USPTO), Coke Morgan Stewart, issued a decision in iRhythm Technologies v. Welch Allyn, Inc.1 that initiates a new basis for discretionary denial of inter partes review (IPR) petitions. The Director denied institution of iRhythm’s IPR petitions because iRhythm had upset Welch Allyn’s settled expectations in the enjoyment of its patents. iRhythm is the first such IPR discretionary denial and raises questions about the scope of this new doctrine and its congruence with judicial and congressional developments.
Client Highlights
10.01.24
Wilson Sonsini Advises PayRange on Investment by Ridgeview Partners
On September 30, 2024, Ridgeview Partners, in partnership with The Baupost Group, announced it has agreed to make a significant strategic growth investment in PayRange, a leading provider of IOT software and payment solutions for unattended retail. Wilson Sonsini Goodrich & Rosati advised PayRange on the transaction.
Alerts
7.01.24
U.S. Supreme Court Administrative Law Decisions Raise Questions for U.S. Patent and Trademark Office Proceedings
Last week, the U.S. Supreme Court decided two important administrative law cases that are expected to increase judicial authority over agency adjudications and rulemaking. In Securities & Exchange Commission v. Jarkesy (decided June 27), the Court held that when the U.S. Securities and Exchange Commission (SEC) seeks civil penalties for securities fraud, the defendant is entitled to a jury trial. In Loper Bright Enterprises v. Raimondo (decided June 28), the Court held that courts should not defer to an agency statutory interpretation. While each ruling might have significant effects on some agencies, their effect on the United States Patent and Trademark Office (USPTO) should be much more limited because, generally, USPTO regulatory authorities are much more limited and because USPTO’s primary reviewing court, the U.S. Court of Appeals for the Federal Circuit, is a specialized court that does not defer to USPTO on legal questions.
Alerts
6.21.21
Supreme Court Holds Administrative Patent Judges Unconstitutional, Leaving More Questions than Answers
Earlier today, the U.S. Supreme Court decided the administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) were not constitutionally appointed, and that the patent owner, Arthrex, Inc., is entitled to a remand for a rehearing by the Director of the United States Patent and Trademark Office. United States v. Arthrex, Inc., 593 U.S. _ (June 21, 2021). The Court was sharply divided, however, over both the problem and the solution, leaving much of the details to the Federal Circuit to work out in this case, as well as the numerous cases it has remanded to the PTAB in view of its decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019).
Newsletters
1.25.21
2020 PTAB Year in Review
The firm's post-grant practice is pleased to present its 2020 PTAB Year in Review. The publication begins with a review of 2020 petition filings at the Patent Trial and Appeal Board (PTAB) and takes a closer look at the impact of the precedential Fintiv decision on discretionary denials of institution. It also provides a summary of recent precedential decisions and administrative directives, explores important appellate decisions relating to PTAB trials, offers an update on the PTAB's Motion to Amend Pilot Program, and addresses the continuing dispute over whether PTAB judges are constitutionally appointed.
Alerts
4.21.20
Supreme Court: PTAB Decisions "Closely Related" to Institution—Such as the One-Year Time Bar—Are Not Appealable to the Federal Circuit
The America Invents Act (AIA) authorizes the Patent Trial and Appeal Board (PTAB) to cancel patent claims that never should have been issued but prohibits the PTAB from acting on petitions for review brought more than one year after the petitioner is sued for patent infringement. 35 U.S.C. § 315(b). On April 20, 2020, the Supreme Court issued a 7-2 decision in Thryv, Inc. v. Click-to-Call Techs., LP, No. 18-916, holding that there is no appellate review of the PTAB's decisions to cancel patent claims on the basis that the petitioner filed too late. In so doing, the Supreme Court also unwound any judicial enforcement mechanism for the Federal Circuit's rule that a complaint that is voluntarily dismissed "without prejudice" still triggers the § 315(b) time bar. See Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1328 (Fed. Cir. 2018). However, the director of the Patent Office has indicated that he agrees with the Federal Circuit's interpretation of § 315(b) and thus the PTAB is likely to continue to follow the now vacated Click-to-Call decision.
Alerts
3.24.20
Federal Circuit Denies Petitions for Rehearing En Banc in Arthrex
On March 23, 2020, a fractured Federal Circuit issued a precedential order denying rehearing en banc in Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140. On October 31, 2019, a three-judge Federal Circuit panel before Judges Moore, Reyna, and Chen issued a unanimous decision finding that Administrative Patent Judges (APJs) of the Patent Trial and Appeal Board (PTAB) were "superior" officers that were not constitutionally appointed under the Appointments Clause. Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) ("Arthrex"). The panel reasoned that because the director of the Patent and Trademark Office (USPTO) lacked power to directly review final written decisions from APJs or authority to remove APJs without cause, the director did not possess sufficient control over APJs for APJs to be considered "inferior" officers. To remedy the issue, the panel held that the requirement that APJs could only be removed for cause would be severed from the statute, making APJs removable by the director for any or no reason and therefore inferior officers. Finally, the panel remanded the case to the PTAB, determining that "a new panel of APJs must be designated and a new hearing granted" now that the constitutionality issue had been remedied by the severance. Arthrex, 941 F.3d at 1340.
Client Highlights
11.01.18
Epistar Obtains Favorable PTAB Ruling on Two Key Patents
On November 1, 2018, Wilson Sonsini Goodrich & Rosati secured a favorable decision on behalf of Epistar from the Patent Trial and Appeal Board (PTAB) in inter partes review (IPR) proceedings as the PTAB denied institution on two important patents in a five-patent dispute between Epistar and Lowes.
Alerts
4.24.18
Supreme Court Issues Two Decisions Impacting Practice Before the Patent Trial and Appeal Board
Today, the U.S. Supreme Court issued two decisions that will keep the Patent Trial and Appeal Board (PTAB) busier than ever. In Oil States Energy Services, LLC v. Greene's Energy Group, LLC,1the Court affirmed that inter partes review (IPR) is constitutional. In SAS Institute Inc. v. Iancu,2the Court reversed the PTAB's practice of limiting the patent claims considered during the trial stage. Although the cases involved IPRs, the issues decided also pertain to other PTAB proceedings, particularly post-grant review (PGR). As a result of these decisions, PGRs and IPRs will remain available to patent challengers, and the PTAB may have to look at more claims and more issues in reaching a final decision. While this is good news for petitioners seeking to challenge patents, patent owners see these decisions as further reason to seek relief from Congress.
Alerts
10.04.17
En Banc Federal Circuit Paves the Way for Easier Claim Amendments in Inter Partes Review Before the PTAB
On October 4, 2017, the U.S. Court of Appeals for the Federal Circuit issued an en banc decision in Aqua Products, Inc., v. Matal, finding that the petitioner has the burden of proving the unpatentability of claims—even amended claims—entered in an inter partes review (IPR). This decision overrules earlier Federal Circuit decisions finding that the burden rested on the patent owner to prove patentability of amended claims and will force immediate changes to amendment practice in trials at the Patent Trial and Appeal Board (PTAB).