PTAB consideration of prior findings of fact and conclusions of law

When claims challenged in an AIA trial, or substantially similar claims, have already been adjudicated post-issuance by the Office, a district court, or the ITC, and the Board reaches an initial or final decision on a finding of fact or conclusion of law that differs from the prior one, the Board must explain in its institution or final written decision why a different outcome is warranted. A more detailed explanation is required where the same or substantially the same evidence and/or arguments are relied upon. The Board is to consider relevant materials from the other proceeding submitted by the parties and may authorize additional briefing. Petitioners who challenge claims already adjudicated elsewhere should expect the Board to compare its outcome to the earlier ruling, and should be ready to justify any different result, especially if they reuse the same evidence or arguments. Patent owners can cite prior favorable findings and conclusions and submit the materials from the other proceeding to hold the Board to its explanation duty. The memorandum applies to both institution and final written decisions. The text provided names no statute, rule, or decision as its basis. WHAT IT DOES: Requires the Board, when it reaches an initial or final decision on a finding of fact or conclusion of law different from a prior finding or conclusion of the Office, district court, or ITC, to explain in the institution or final written decision why a different outcome is warranted. Requires a more detailed explanation when the same or substantially the same evidence and/or arguments previously presented are relied upon. 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) and permits it to authorize additional briefing. WHO AND WHEN: Applies to Board members in AIA trial proceedings where the challenged claims, or substantially similar claims, have already been adjudicated post-issuance before the Office, in district court, or at the ITC. Dated September 16, 2025; the text provided states no separate effective date. KEY QUOTE: "A more detailed explanation is required from the Board when the same or substantially the same evidence and/or arguments that were previously presented to the Office, the district court, or the ITC are being relied upon in the subsequent AIA trial proceeding." (p. 1) EARLIER GUIDANCE AFFECTED: None identified in the document. PRACTICE TIP: Put the prior opinions, judgments, trial testimony, and other evidence from any earlier adjudication of the same or substantially similar claims before the Board, and address directly whether your evidence and arguments are new or the same as those previously presented, since that determines how much the Board must explain. Issued by Coke Morgan Stewart, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office.