Context: In February, Acting Director of the United States Patent & Trademark Office (USPTO), Coke Morgan Stewart, reinstated the NHK-Fintiv framework, allowing the Patent Trial and Appeal Board (PTAB) to deny inter partes reviews (IPRs) if parallel district court litigation is ongoing. A month later, Ms. Stewart sent a memo to all PTAB judges establishing a new process for America Invents Act (AIA) proceedings, which would mean that prior to any potential merits proceedings, there will be a Director review of the patentee’s arguments for discretionary denial (March 27, 2025 ip fray article). This led to a huge surge in PTAB discretionary denial decisions, according to a study released last month (May 27, 2025 Unified Patents report). Prior to the interim administration’s actions, there were no denials under these factors, but between March and May, there were at least 42 decisions addressing Fintiv issues (June 12, 2025 ip fray article).
What’s new: The USPTO PTAB issued at least 13 more of such decisions, denying petitions for IPRs filed by Intel Corporation, Google, Nokia, Ericsson, Verizon, Cellco, AT&T, and Cambridge Industries. In one of those decisions, Ms. Stewart also offered guidance on when she will decide whether a patent owner can rest on settled expectations that its patent will not be challenged.
Direct impact: The guidance offered by the USPTO Acting Director shows that patents of a certain age are now becoming hard to challenge through IPR petitions in the U.S. She particularly noted that patents owned by Proxense LLC that had been challenged by Intel were over nine years old, creating “settled expectations” for the patentee. According to David L. Hecht, who acts for Proxense, the company’s portfolio has 34 patents that were issued eight or more years ago (June 27, 2025 LinkedIn post by David L. Hecht).
Wider ramifications: The massive surge in denials underscores the challenges in pursuing IPR invalidity challenges at the USPTO. As we previously reported, some of these denials have stirred some backlash, with former Director Kathi Vidal (now at Winston & Strawn) warning in a recent interview that the iRhythm Technologies v. Welch Allyn decision will have “far-reaching and damaging consequences”. Meanwhile, Ropes & Gray LLP’s Matt Rizzolo emphasized that the decision made in Klein Tools v. Milwaukee Electric Tool showed that “at least for the time being”, the United States International Trade Commission (ITC) is an “antidote” to the PTAB (June 12, 2025 Matt Rizzolo LinkedIn post).
In December 2024, Proxense LLC filed a request for discretionary denial against Intel over the following patents, all entitled “Dynamic real-time tiered client access”:
This is the USPTO’s decision:
In the decision, the USPTO emphasized that the challenged patents have been in force for over nine years, creating “settled expectations”. While there may be persuasive reasons why the PTAB should review challenged claims several years after their issuance date, it noted in this decision that these were absent from Intel’s arguments. Some examples include:
- A significant change in law may have occurred since the patent was issued, and a petitioner can explain how that change in law directly bears on the patentability of the challenged claims; or
- A patent may have been in force for years but may not have been commercialized, asserted, marked, licensed, or otherwise applied in a petitioner’s particular technology space, if at all.
That same month, Pegasus Wireless Innovation LLC also filed a request for discretionary denial against Google, Nokia, Ericsson, Verizon, Cellco, and AT&T. The case involved the following patents:
- U.S. Patent No. 11,540,272 (“Method and device for allocating data channel resource for next-generation wireless access network”)
- U.S. Patent No. 10,181,931 (“Method for uplink control channel resource allocation of terminal and apparatus thereof”)
- U.S. Patent No. 10,721,118 (“Method for configuring dual-connectivity by terminal, and apparatus therefor”)
- U.S. Patent No. 10,594,460 (“Apparatus and method for transmitting and receiving uplink channel”)
- U.S. Patent No. 9,894,644 (“Method for transreceiving downlink control information and apparatus for same”)
- U.S. Patent No. 10,009,161 (“Method for transmitting and receiving the channel state information and apparatus thereof”)
- U.S. Patent No. 11,405,942 (“Method and apparatus for transmitting and receiving downlink signal in next generation wireless network”)
In this decision, Coke Morgan Stewart recused herself. The PTAB actually found that a district court was scheduled to hear this case starting in September, and it is unlikely that a final written decision in these proceedings will be issued before the district court trial occurs. And, it noted, there is insufficient evidence that the district court is likely to stay its proceeding even if the PTAB were to institute a trial.
However, three of the patents at issue (U.S. Patent No. 10,721,118, U.S. Patent No. 10,594,460, and U.S. Patent No. 11,405,942) were dismissed from the parallel district court dispute on May 19, 2025, based on a joint motion by the parties involved. So, the PTAB concluded, this “does not tip the balance against discretionary denial”.
In January, Applied Optoelectronics Inc. filed a denial request against Cambridge Industries USA, Inc. over the following two patents:
- U.S. Patent No. 9,523,826 (“Pluggable optical transceiver module”)
- U.S. Patent No. 10,042,116 (“Techniques for direct optical coupling of photodetectors to optical demultiplexer outputs and an optical transceiver using the same”)
This is the USPTO PTAB’s decision:
Other recent discretionary denials include Samsung Electronics v. SiOnyx, LLC (June 6, 2025 USPTO PTAB decision), iRhythm Technologies v. Welch Allyn, and Klein Tools v. Milwaukee Tool (June 9, 2025 USPTO PTAB decision (PDF)).
Counsel
Counsel for Intel: Lori Gordon and Christie Larochelle at Goodwin Procter.
Counsel for Proxense LLC: David Hecht and James Zak at Hecht Partners.
Counsel for Google, Nokia, Ericsson, Verizon, Cellco, and AT&T: Kevin Anderson and Patrick McPherson at Duane Morris, as well as David Frist, Tyler Espy, Ross Barton, Scott Pleune, J. Ravindra Fernando, and Christopher Douglas at Alston & Bird LLP, and a team at Buchanan Ingersoll & Rooney: Patrick Keane, Roger Lee, and Andrew Koopman.
Counsel for Pegasus Wireless Innovation LLC: Wayne Helge and James Wilson at Bunsow De Mory LLP.
Counsel for Cambridge Industries: Nicola Pisano and Regis Worley at Eversheds Sutherland.
Counsel for Applied Optoelectronics: Jo Carothers and Eric Caligiuri at Weintraub Tobin Law Corporation.