backIntro
On September 16, 2025, acting USPTO Director Coke Morgan Stewart released a memo instructing the Patent Trial and Appeal Board (PTAB) that if the Board is considering claims that have “already been adjudicated” before the Office, in district court, or at the U.S. International Trade Commission (ITC) and “the Board reaches an initial or final decision on a finding of fact or conclusion of law that is different than the prior finding … the Board shall explain … why a different outcome is warranted.”
The memo further advised that the “Board shall consider relevant materials submitted by the parties from the other proceeding,” noting that a “more detailed explanation is required from the Board when the same or substantially the same evidence and/or arguments” are presented (emphasis added). Director Stewart goes on to explain that “relevant materials” can include “an opinion, a judgment, trial testimony, or other evidence” and that the Board may also authorize additional briefing to aid in its assessment of differentiation.
At first glance, this memo appears to merely restate two well-established best practices: (1) under the Administrative Procedure Act, the Board must clearly articulate its reasoning and consider all evidence before it; and (2) practitioners should submit and address all relevant evidence and opinions from any related proceeding. On closer review, however, practitioners should recognize the likely expanded scope of relevant evidence and opinions, as well as the impact to strategic considerations in parallel proceedings.
Guidance for Practitioners
(1) What does “already adjudicated” mean?
Patent claims for which there have been prior findings of fact or conclusions of law. Director Stewart’s memo applies when “patent claims…have already been adjudicated” and specifically references “prior findings of fact or conclusions of law” of the Office, district court, or the ITC. While most practitioners are already presenting final judgments and dispositive orders to the PTAB, this language encourages latitude in the sort of findings to present. For example, in district court proceedings, practitioners should review motions for dismissal, motions on the pleadings, preliminary injunction orders, and dispositive motion orders for potential findings and conclusions.
For related ITC proceedings, practitioners should review both initial and final determinations, though it is unlikely the Board would give any persuasive weight to an initial determination that differs from a final determination.
Notably, even the memo’s reference to proceedings before the Office leaves room for a more expansive interpretation of relevant adjudications. While clearly including any prior reexam or AIA proceeding determinations, the memo could also refer to the Office’s consideration of the same or substantively similar prior art during the prosecution history. While Patent Owners should always flag any overlap between prior art included in petitions and considered during the prosecution history—either in support of their arguments or in a request for discretionary denial under Advanced Bionics—this September 16 memo may place an obligation on the Board to include detailed reasoning as to why a different outcome (i.e., institution or finding of invalidity) is warranted even where there is no request for discretionary denial.
(2) When will the memo’s requirements matter in IPRs with parallel proceedings?
In the current climate? Only for early rulings. The recent return to the PTAB’s liberal approach to discretionary denials indicates that the Board is more inclined to deny institution based on concurrent litigation. If a parallel proceeding is likely to reach trial or final judgment before the Board issues an institution or final written decision, the Board will likely exercise its discretion to deny institution of an IPR—without ever reaching the merits. Accordingly, it is likely that for instituted IPRs or IPRs that reach a final written decision, the only relevant “adjudications” in a parallel proceeding will be early determinations—e.g., motions on the pleadings or preliminary injunctions. When negotiating possible extensions in a parallel district court proceeding, the parties should consider the timing of dispositive motions with respect to the IPR timeline and whether it is within their interests to delay a Court determination that could be considered by the Board.
(3) What evidence from a prior adjudication will the Board consider in its analysis?
The Board cannot consider issues, arguments, or evidence that are not before it. The September 16 memo directs the Board to consider relevant materials submitted by the parties from the other proceeding, “e.g., an opinion, a judgment, trial testimony, or other evidence.” But it would be impossible for the Board to distinguish reasoning or another tribunal’s analysis of the evidence when the Board cannot review that reasoning or evidence. Therefore, where a party relies on a prior adjudication to support its arguments, it is critical that practitioners submit any determination or evidence that was necessary to the relevant findings of fact or conclusions of law. Practitioners should ensure all lawyers involved in different proceedings are working together to identify important evidence or decisions.
The catchall term “other evidence” raises some questions as to the breadth of acceptable evidence and the administrative difficulties that may arise under the PTAB’s evidentiary rules. For example, does an expert report, on which a district court relied when granting summary judgment of invalidity, qualify as “other evidence”? Presumably, yes. And if a party files an expert report from a different proceeding as “other evidence,” will it have to make the expert witness available for deposition in accordance with PTAB rules? See 37 C.F.R. § 42.53(a); Consolidated Office Trial Practice Guide (Nov. 2019) pp. 23 (requiring “a party presenting a witness’s testimony by affidavit … to make the witness available for cross-examination”). Again, presumably, yes.
As another example, how will the Board handle the filing of redacted or sealed documents as “other evidence”? The PTAB has special rules on the handling of confidential information and generally holds a strong preference for a public record. See 37 C.F.R. § 42.54. If a party submits confidential information as “other evidence,” it will need to confer with the opposing party and propose a protective order for approval by the Board. See Consolidated Office Trial Practice Guide (Nov. 2019) pp. 19-22, Appendix B. While confidential evidence relevant to the issue of patent validity is rarer, it may be an issue when analyzing secondary considerations of nonobviousness or where a relevant document addresses more than just patent validity.
(4) Is the Board going to pass this work back to the parties with additional briefing?
Maybe. In practicality, parties should already be analyzing relevant adjudications in their briefing on the merits and the Board should already be assessing relevant adjudications in their determinations. However, if the record remains unclear as to whether the precise issues before the Board were the same at issue in the prior adjudication, the Board may seek additional briefing to clarify. It is unlikely this briefing would be extensive, but practitioners should consider the potential increase in cost to address any prior findings or conclusions.
Final Notes
Motions to Submit Supplemental Information. Motions to submit supplemental information are likely to become more common. Where relevant adjudications in another proceeding are made after Petitioner has filed the petition and after Patent Owner has filed its response (thereby defining the scope of relevant evidence and arguments in the proceeding), parties would be well-advised to seek permission to file the relevant opinion and evidence as supplemental information. Practitioners should anticipate this possibility and allocate budgetary resources accordingly to accommodate the additional briefing.
Dispositive Motions in a Parallel Proceeding. In parallel district court proceedings, it will be even more important to carefully evaluate the strength of dispositive motions on prior art or validity issues, as their outcomes may influence the Board’s analysis. It is not rare for practitioners to file motions for summary judgment, even where chances of success are low. For example, practitioners may file motions to educate the Court, bring an issue to the Court’s attention, force the opposing party to identify key evidence and legal arguments, or even influence settlement discussions. But the Director’s most recent memo may find parties leaning more heavily on district court findings and a denial of summary judgment may influence the Board’s analysis or at least cause the Board to take a closer look at the issue.