USPTO Director Grants Discretionary Denials Due to Trial Timing Constraints Despite Young Age of Patents
In a series of decisions made on Friday, Acting Deputy Chief Administrative Patent Judge Kalyan K. Deshpande denied institution in six inter partes reviews (IPRs) brought by Samsung against GenghisComm Holdings, LLC. The patents at issue in these IPRs were granted between 2021 and 2022, with Patent 11,252,005 B1 being the patent in IPR2025-00791, Patent 11,424,792 B2 in IPR2025-00793, Patent 11,381,285 B1 in IPR2025-00792, Patent 10,389,568 B1 in IPR2025-00788, Patent 11,075,786 B1 in IPR2025-00789, and Patent 11,223,508 B1 in IPR2025-00790.
Deshpande noted that it is unlikely that a final written decision in these proceedings will issue before the district court trial occurs, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions.
In a separate case, USPTO Acting Director Coke Morgan Stewart's 'settled expectations' doctrine was explicitly afforded to a patent that is six years old. The patent in question, U.S. Patent No. 10,339,825, titled 'System and method for on-line academic competition', was the subject of Stewart's July 31 decision in the Kahoot! AS v. Interstellar, Inc case.
Deshpande incorporated the analysis from IPR2025-00780 and IPR2025-00781 into the analysis for the cases at issue in the Friday decisions, irrespective of the difference in patent age. In the IPR2025-00780 and IPR2025-00781 Director Discretionary Denial decisions, Deshpande highlighted two main reasons for granting the petitions: the timing of the parallel court proceeding and the age of the patents.
Interestingly, in the six denied IPRs, GenghisComm Holdings, LLC, the patent holder, is defending against the challenges brought by Samsung. There is no evidence that any other challenger companies are involved in these denials.
In the Kahoot! AS v. Interstellar, Inc case, the patent in question was granted in 2019, making it the youngest patent so far to create 'strong settled expectations' for the patent owner.
It's worth noting that USPTO Acting Director Coke Morgan Stewart recused herself from the decisions due to a conflict and delegated her authority to Deshpande via a Notice of Delegation.
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