Acting Director’s Incorporation by Reference Makes Discretionary Denial Decision Short and Sweet

In Advanced Micro Devices, Inc. v. Concurrent Ventures, LLC, IPR2025-00486, Paper 9 (PTAB July 17, 2025), USPTO Acting Director Coke Morgan Stewart incorporated by reference an earlier referral in Advanced Micro Devices, Inc., v. Concurrent Ventures LLC, IPR2025-00479, Paper 10 (PTAB Jul. 10, 2025). That case, and subsequently this one, were referred because ongoing district court litigation had stalled and the patent owner had not yet developed strong settled expectations.

Pointing to an earlier IPR involving the same parties—IPR2025-00479—the Acting Director explained that this later decision involved “the same discretionary considerations” as the earlier proceeding. This later decision is noteworthy in that the reasoning for referral to the board is not explicitly given. Instead, the opinion incorporates by reference the earlier decision’s reasoning stating “[t]his proceeding presents the same discretionary considerations as those presented in IPR2025-00479.” The Director has used this same procedure to handle other, later filed IPRs facing similar facts.[1]

This decision illustrates that when undertaking multiple related IPRs both patent owners and petitioners should make their best arguments and highlight their most favorable discretionary considerations in the first IPR since the discretionary denial reasoning for that first IPR may be adopted in subsequent related IPRs.

[1] See, e.g., Sportradar AG v. SportsCastr Inc. (d/b/a PANDA Interactive), IPR2025-00634, -00635, Paper 16 (PTAB Jul. 24, 2025; Berkshire Hathaway Energy Company, Interstate Power & Light Company, MidAmerican Energy Company, PacifiCorp, WEC Energy Group, Inc., and Wisconsin Power & Light Company v. Birchtech Corp. IPR2025-00422-00423 (PTAB Jul. 17, 2025); Coretronic Corporation and Optoma Corporation v. Maxell, Ltd. IPR2025-00475 (PTAB Jul. 17, 2025); Yealink (USA) Network Technology Co., Ltd. and Yealink Network Technology Co., Ltd. v. Barco N.V. IPR2025-00597, IPR2025-00598 (PTAB Jul. 17, 2025).