The Patent Trial & Appeal Board (PTAB) remains a critical forum for resolving intellectual property (IP) disputes, with recent developments reshaping the landscape for both patent holders and challengers. As the PTAB’s practices and procedures continue to evolve, staying informed is essential for crafting a successful IP strategy.

During this webinar, Brian Oaks and David Tobin provided a short overview of post-grant trials, as well detailed updates on discretionary denials, how to use general engineering knowledge, and how estoppel applies.

Top takeaways included: 

1. Change in discretionary denial process:  Since March 2025, the merits panel no longer addresses discretionary denials as part of its institution decision 6 months after filing the petition.  Rather, this process is now handled by the director of the PTAB, within months two to four of when a petition is filed.
2. Change in institution rates:  Prior to March 2025, about 63% of all petitions filed were instituted.  Since the change in processes, about 40% of petitions are instituted.
3. Key reasons for discretionary denial:  So far, the key factors in denying petitions on discretionary grounds are parallel district court litigation whose trial date is before the final written decision date and settled expectations of the parties.  The PTAB director is likely to deny institution when district court trial precedes a PTAB final written decision and for patents filed before 2019.
4. General engineering knowledge:  The PTAB has also changed direction regarding petitioners using general engineering knowledge, common sense, and applicant admitted prior art (collectively, general knowledge).  The PTAB would allow petitioners to use general knowledge to supply missing limitations that were generally known, to support a motivation to combine, or for demonstrating the knowledge of a person of ordinary skill in the art for any other purpose.  In July 2025, the PTAB director issued a memo to constrain use of general knowledge to supporting a motivation to combine particular references; each claim limitation must now be expressly found in a patent or printed publication.
5. Estoppel:  The Federal Circuit clarified a former district court split about whether estoppel applies to system art that is coextensive with patents and printed publications (e.g., a user manual for a product).  The Federal Circuit held in Ingenico v. IOEngine (May 2025) that IPR estoppel does not preclude a petitioner from relying on the same patents and printed publications (e.g., user manuals) as evidence that a product was on sale or in public use.