For multinational companies, sell-side contracts 鈥� customer, distributor, reseller, licensing, and service agreements 鈥� often define the company鈥檚 front-line regulatory exposure. These agreements govern how products are sold, priced, shipped, supported, and represented in the market, and they frequently determine who bears responsibility for regulatory compliance, trade costs, and downstream conduct. Yet sell-side contracts are often negotiated primarily around revenue, margins, and speed to close, with compliance considerations addressed inconsistently or late in the process.

As detailed in Parts I and II of this risk-assessment self-check series, we are publishing a series of self-check assessment guides covering the key regulatory and contractual risk areas for multinational companies. This article provides Part III, which is a self-check assessment for conducting a sell-side contracts review. Part II covered the topic of conducting a buy-side contracts review; Part I provided a self-check for general compliance.

Regulators increasingly look to customer-facing arrangements to assess whether compliance expectations are embedded in commercial reality. Sell-side contracts shape pricing behavior, market access, use of intermediaries, data flows, export and sanctions exposure, tariff pass-through, and post-sale obligations. Weak or inconsistent sell-side contracting practices can undermine broader compliance programs, particularly where distributors or customers act on the company鈥檚 behalf in higher-risk markets.

This self-check is designed to help companies assess whether they have a structured, risk-based approach to managing sell-side contracts, rather than a fragmented or purely sales-driven one. It focuses on governance, risk assessment, contracting standards, trade-cost allocation, and lifecycle management 鈥� not on specific regulatory regimes or boilerplate clauses. A 鈥渘o鈥� answer does not automatically indicate a legal violation, but it may signal a systemic gap that warrants attention based on the company鈥檚 markets, customers, and distribution model.

I.          Governance & Ownership

• Is there clear ownership for sell-side contracting standards across legal, compliance, sales, and finance functions?
• Are roles and responsibilities defined for: (1) contract drafting and negotiation; (2) compliance review and approval; (3) pricing and discount authority; and (4) ongoing contract oversight?
• Are escalation paths clearly defined when sales teams seek deviations from standard compliance or risk-allocation terms?

II.         Risk Assessment & Contract Scoping

• Does the company apply a risk-based framework to determine which sell-side contracts require enhanced review?
• Does the risk assessment consider: (1) customer type and location; (2) sales channels (direct, distributor, reseller, online); (3) use of intermediaries or agents; (4) government or state-owned customers; and (5) cross-border delivery of goods, services, or data?
• Are contracting requirements scaled to risk, rather than applied uniformly or inconsistently?

III.        Contract Standards & Consistency

• Does the company maintain baseline sell-side contract standards or templates aligned with its business models?
• Are compliance-related provisions: (1) consistent across regions and customer types; (2) commercially workable and understood by sales teams; and (3) updated periodically to reflect evolving risks and enforcement trends?
• Is there a documented process for approving deviations from standard sell-side terms?
• Are relevant sales personnel trained in best practices for compliance and contracting?

IV.        Integration with Compliance Programs

• Do sell-side contracts reinforce the company鈥檚 broader compliance framework, including: (1) codes of conduct or ethical standards; (2) restrictions on improper conduct by distributors or resellers; and (3) audit, cooperation, and termination rights?
• Are customers or intermediaries contractually required to comply with applicable laws relevant to the transaction?
• Are expectations clearly communicated to counterparties, not just embedded in legal language?

V.         Pricing, Discounts & Fair Dealing Controls

• Are pricing, discounts, rebates, and incentives subject to defined approval and documentation processes?
• Do contracts align with internal pricing authority and discount controls?
• Are sales practices monitored to ensure consistency with contractual terms and compliance expectations?

VI.        Tariff & Trade Risk Allocation

• Do sell-side contracts clearly address responsibility for customs duties, tariffs, taxes, and import-related charges and how to handle potential refunds?
• Are Incoterms庐 expressly specified, current, and consistent with the company鈥檚 logistics and delivery practices?
• Do contracts clearly allocate responsibility for: (1) importer of record status; (2) customs clearance; and (3) payment of duties and tariffs?
• Do contracts address unexpected or newly imposed tariffs, including: (1) changes in tariff rates or classifications; (2) new trade remedies or retaliatory tariffs; and (3) shifts in country-of-origin treatment or enforcement posture?
• Is there a defined mechanism for price adjustments, renegotiation, or termination in response to significant trade-cost changes?
• Are limitations placed on retroactive or unilateral tariff pass-throughs?
• Are customers required to cooperate in documenting and resolving tariff disputes where trade costs are contested?

VII.       Contract Lifecycle & Change Management

• Is there a process to ensure sell-side contracts are reviewed and updated when business or regulatory risks change?
• Are contracts revisited following: (1) entry into new markets; (2) changes in sales channels or distribution models; and (3) significant regulatory or tariff developments?
• Are any legacy obligations from expired contracts identified and addressed?

VIII.      Monitoring, Enforcement & Remediation

• Are there mechanisms to monitor compliance with sell-side contractual obligations?
• Is there a defined process for addressing: (1) customer or distributor non-compliance (2) repeated breaches or circumvention of controls; (3) misalignment between contract terms and actual practices?
• Are contractual remedies 鈥� such as remediation, suspension, or termination 鈥� used in practice when warranted?

If you would like to help analyzing the results of your compliance self-check, please reach out to the authors or your 麻豆直播 relationship attorney.

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Would you like more practical compliance tips like these? The 麻豆直播 International Trade & National Security Team is monitoring all international trade, enforcement, and compliance developments, which we post as they occur on our Tariff & International Trade Resources blog. for our email list to receive future emails and practical international regulatory compliance tips, including our Tariff-ied! and What Every Multinational Should Know articles.

Our white paper on Managing Import and Tariff Risks During a Trade War outlines a 12-step plan to provide practical steps to help importers navigate the tariff and international trade risks in the current tariff and trade environment, while the companion white paper on Managing Supply Chain Integrity Risks provides practical advice to deal with heightened supply chain risks pertaining to goods imported into the United States, including the increasing use of detentions by Customs.

Key Legal Insights from 麻豆直播鈥檚 Automotive Team

Analysis by Julie Dautermann, Competitive Intelligence Analyst

麻豆直播 is here to help you through all aspects of rethinking your long-term business strategies, investments, partnerships, and technology. Contact the authors, your 麻豆直播 relationship partner, or our Automotive Team to discuss and learn more. 

AUTOMOTIVE KEY DEVELOPMENTS

• Mobility Global, a spin-off of S&P Global Mobility, U.S. new light-vehicle sales will reach 15.8 million units in 2026 and 15.6 million units in 2027, with 鈥渁ffordability remaining a key determinant of consumer purchase timing and powertrain choice.鈥�
• GM up to $4.5 billion worth of critical parts through a deal with inventory management firm Procura Auto Parts. GM will pay Procura interest and certain fees in advance to buy components from suppliers, with payment for the parts due when they are needed, or no later than July 31, 2029. The automaker did not disclose which parts it will target.
• New light-vehicle inventory at the start of August was at 2.73 million units, representing a 75 days鈥� supply industrywide. This is similar to inventory levels at the same time last year.
• Automotive assembly jobs increased in the last year, amid an overall decline in auto parts manufacturing jobs, according to an analysis of the latest Bureau of Labor Statistics jobs report in .
• International Energy Agency shows global EV sales rose 35% in Q2 2026 from the prior quarter, supported by stronger demand in markets including Australia, Brazil, India, Korea, and Vietnam. With gasoline prices remaining elevated, the IEA expects EVs to account for 29% of global new-car sales in 2026, up from 25% last year. The report also highlights China鈥檚 accelerating role in global EV supply, with Chinese EV exports up 120% in the first half of 2026 compared to the same period last year.

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TRADE/TARIFFS

• 麻豆直播 & Lardner LLP partner Gregory Husisian shared insights with听听and the听听on the recent surge in tariff refund litigation, ongoing uncertainty surrounding timelines, and how companies are navigating the financial impact of tariff repayments.
• President Trump paused to impose 50% tariffs on certain Canadian imports ahead of the August 19 deadline, citing progress toward a trade deal that could on Canadian automobiles, steel, and aluminum.
• During recent U.S.-Mexico-Canada Agreement (USMCA) negotiations, the Mexican government proposed applying tariffs only to the value of vehicle components produced outside North America, according to unnamed sources in . This is reported to be a counterproposal to the Trump administration鈥檚 goal to require in vehicles.
• The U.S. Court of International Trade a Michigan-based automotive parts distributor, upholding the Trump administration鈥檚 elimination of the 鈥渄e minimis鈥� tariff exemption for low-value imports. The decision found that the International Emergency Economic Powers Act (IEEPA) authorized President Trump to revoke the duty-free exemption, even though the Supreme Court has ruled the act does not authorize the president to impose tariffs.
• U.S. Customs and Border Protection will implement enhanced enforcement procedures to verify the accuracy of importer of record information submitted on CBP Form 5106. According to 颁叠笔鈥檚 , importers of record and customs brokers must ensure that Form 5106 information is complete and accurate by September 18, 2026, or risk potential penalties and disruption of importing activity.
• The Trump administration is developing an AI-enabled 鈥淒etective Border鈥� tool to improve 颁叠笔鈥檚 ability to distinguish legitimate nearshoring and foreign investment from illegal pass-through trade, according to a focused on tariff evasion via transshipment. The administration has identified more than 40 trading partners 鈥� including Mexico, Canada, the European Union, India, Japan, and South Korea 鈥� 听as having elevated illegal transshipment risk.
• The Trump administration granted the Commerce Department听听to ban exports of recoverable critical minerals under the Defense Production Act. The Commerce Department subsequently that would require 100% of U.S. sales of black mass and scrap tungsten to be allocated to U.S. persons as of August 27, 2026, 鈥渦nless an adjustment or exception is obtained in advance.鈥� The agency defines 鈥渂lack mass鈥� as shredded lithium-ion battery scrap that contains cathode material (such as lithium, cobalt, nickel and manganese), anode material (graphite and silicon), or other residual battery cell materials.

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OEMs/SUPPLIERS  

• Ford to move production of certain Lincoln models from China to the U.S. beginning in 2030.
• Stellantis that the next-generation Jeep Cherokee SUV will be built on the automaker鈥檚 new STLA One platform at its Belvidere, Illinois, assembly plant.
• Honda has outsourced development of a new, multi-powertrain vehicle platform for undisclosed markets to India-headquartered Tata Technologies Ltd.
• Geely’s External Collaboration Research Institute offers turnkey vehicle development, technology licensing, and engineering services to customers that include major . Launched in 2021, it currently has in progress with a听dozen clients.
• Nexteer Automotive a new High Mount Direct Drive Steer-by-Wire Hand-Wheel Actuator (HMDD) intended to give automakers greater cockpit design freedom for software-defined vehicles.
• Daimler Truck North America plans to establish a new U.S. manufacturing facility that will begin production in 2029. DTNA is evaluating multiple sites, and it expects construction to start later this year.
• GM 听350 employees at two Lansing plants听as a part of a previously announced $1.25 billion investment for Cadillac sedan production.

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AUTONOMOUS TECHNOLOGIES AND VEHICLE SOFTWARE

• The relatively short support cycles of smartphones and computers have raised questions about how software-dependent vehicles will age, according to a report by . Sam Fiorani, senior vice president of vehicle forecasting for AutoForecastSolutions, stated, 鈥淲e honestly don鈥檛 know how long these vehicles will last. We鈥檙e already seeing problems with hardware not being able to deal with new software.鈥�
• provided an update on the projected market growth of over-the-air (OTA) updates.
• provided an overview of automakers鈥� strategies to deploy artificial intelligence assistants in vehicles. Most recently, Ford announced it is its in-vehicle AI-powered assistant to eight million more eligible vehicles, following an initial launch that started earlier this year.
• Tokyo-headquartered autonomous-driving software developer Turing to establish a U.S. office within the next year that will initially focus on research and development.

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MARKET TRENDS AND REGULATORY

• Automakers have over 20 million vehicles due to faulty backup cameras since the U.S. mandated the safety system eight years ago. JD Power indicates that the camera systems have been among the top 10 most-problematic vehicle features every year since 2022. Most recently, Stellantis announced it nearly a million vehicles 鈥� mostly Chrysler, Dodge and Jeep models in the U.S. 鈥� due to potentially faulty rearview cameras.
• A federal judge warned that allowing the U.S. Environmental Protection Agency to submit California emissions waivers for congressional review more than a decade after they were granted could have far-reaching consequences for oversight of agency rulemaking, reported.
• The California Energy Commission new rules that will phase out the sale of replacement tires that do not meet certain energy efficiency standards beginning in 2029.
• Mexican production of heavy-duty commercial vehicles by more than 50% year-over-year in July, with truck and bus exports rising 67% YOY.

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HYBRID AND ELECTRIC VEHICLES

• Tesla exhausted its share of California’s MyFirstEV rebate program within five days. The offers $3,500 rebates to first-time buyers of new EVs, and it is funded equally by the state and automakers.
• LG Energy Solution provided an on plans to produce batteries for energy storage systems and EVs at a Lansing, Michigan factory that was once intended to be a joint venture with GM.
• Samsung SDI 骋惭鈥檚 49.99% stake in听a planned $3.5 billion EV battery joint venture plant in Indiana. 骋惭鈥檚 decision to sell its stake in the SynergyCells battery plant听follows similar actions by Ford and Stellantis to dissolve battery JVs in North America in response to market conditions.
• Ford its upcoming electric pickup, Fathom, will have a starting price of less than $30,000 and it will be available for preorders in early 2027. This will represent the first vehicle to be built using Ford鈥檚 鈥淯niversal Electric Vehicle鈥� platform.
• Specialty EV upfitter Grounded it closed a $5 million seed round听and opened a new 50,000-square-foot manufacturing facility in Detroit.
• Boston-headquartered Cabot Corp. to establish a $50 million battery materials plant in Wayne County, Michigan.听
• Customer satisfaction with DC fast chargers rose 12 points to 666 (on a 1,000-point scale), while satisfaction with public Level 2 chargers declined 12 points to 595 from the same period a year ago, according to the . The study also notes that 鈥渟atisfaction is highest among DC fast chargers located at hotels (692), gas stations/convenience stores (689) and restaurants (688), while chargers located at dealerships (570) and stand-alone parking lots/garages (606) are among the least satisfying experiences for owners.鈥�

In the latest episode of Energized by 麻豆直播, Deanna Reitman sits down with Rod Hutchinson for an inside look at one of the most essential 鈥� and least understood 鈥� forces behind the energy industry: structured commodity finance. From crude and LNG to refined products, Rod explains how these financing structures help move energy from the wellhead to the end user, making global supply chains possible.

This episode pulls back the curtain on the financial frameworks that keep energy markets functioning and shows how lenders balance opportunity with risk in a constantly shifting landscape. If you want a smarter understanding of what really keeps the energy economy moving beyond production and infrastructure, this is a conversation worth listening to.

This episode features a conversation with Daniela Valladares. Daniela is a summer associate in 麻豆直播鈥檚 Chicago office focused on litigation. In this discussion, Daniela reflects on growing up in McAllen, TX, and earning her BA and Master鈥檚 in accounting from The University of Texas at Austin before attending Texas Tech University School of Law. Daniela reflects on her experience as a summer associate, including the assignments and various summer associate events. She also shares wonderful advice to prospective and current law schools on the importance of seeking out information proactively, using career centers, and networking to maximize opportunities.

顿补苍颈别濒补鈥檚&苍产蝉辫;笔谤辞蹿颈濒别:

• Title: Summer Associate
• 麻豆直播 Office: Dallas
• Hometown: McAllen, TX
• College: The University of Texas at Austin
• Law School: Texas Tech University School of Law

Click here for full list of The Path & The Practice episodes.

You can also find, and subscribe, to this podcast on all major podcast platforms including , ,  and .

In June, the U.S. Department of the Treasury’s Office of Foreign Assets Control (OFAC) issued a fresh round of new and amended Venezuela-related general licenses (GLs) targeting sectors such as energy, financial services, and aviation. Taken together, these actions signal OFAC’s continued recalibration of the Venezuela sanctions program 鈥� tightening restrictions in some areas while carving out narrow pathways for certain commercial and humanitarian activities. Companies with exposure to Venezuela should review these developments carefully to determine whether their operations fall within the scope of the new authorizations or, equally important, within the transactions that remain squarely prohibited.

These GLs continue the shift that began in January 2026 鈥� after years of increasingly restrictive sanctions targeting Venezuela鈥檚 government and state-owned enterprises, OFAC has now issued more than a dozen general licenses authorizing significant new categories of oil, gas, mining, and financial-services activity involving Venezuela. These changes have opened new opportunities for business in Venezuela, subject to defined limits and OFAC鈥檚 ability to amend and withdraw. Indeed, the distinctions and carveouts present in OFAC鈥檚 General Licenses serves as an important reminder of the broader licensing requirements in place when conducting business with Venezuela while the U.S. continues to promote investment in this nation recently subject to comprehensive sanctions.

Permissible Activity Under Key General Licenses

Until early 2026, OFAC鈥檚 Venezuela program provided sanctions relief mainly through individual, company-specific licenses.[1] However, after Venezuela鈥檚 January 2026 hydrocarbons law reform, OFAC quickly began issuing categorical general licenses, rather than authorizing relief to one company at a time. In June, a flurry of activity resulted in the following General Licenses and/or their amendments:

• General License 46[2] and its current amendments allow 鈥渆stablished U.S. entities鈥� (companies organized in the United States on or before January 29, 2025) to purchase, export, and refine Venezuelan-origin crude oil and petroleum products.
• General License 47[3] permits the export of U.S.-origin diluents, which are needed to process Venezuela鈥檚 heavy crude, to Venezuela.
• General License 48[4], as currently amended, authorizes U.S. persons to supply goods, technology, and services needed for oil, gas, and petrochemical exploration, development, and production, as well as electricity generation in Venezuela (though it does not authorize forming new joint ventures in Venezuela).
• General License 49[5], as currently amended, allows companies to negotiate and sign contingent investment contracts covering Venezuela鈥檚 oil, gas, petrochemical, and electricity sectors, though each contract still requires separate OFAC approval before it can take effect. This license does not authorize performance.
• General License 50B[6], as currently amended, goes further, authorizing actual oil and gas operations in Venezuela by six named companies, including Eni, Repsol, and Shell. Companies not on this list cannot rely on GL 50 to conduct operations.
• General License 5X authorizes, effective August 4, 2026, all transactions related to the Petr贸leos de Venezuela, S.A. (PdVSA) 2020 8.5 Percent Bond that would otherwise be prohibited under Executive Order 13835. Note that the authorization does not take effect until August 4, so transactions before that date in the bond remain prohibited, and market participants should plan accordingly.

While these General Licenses do not have fixed expiration dates, several of them have already undergone multiple amendments, reflecting how quickly OFAC is willing to adjust the program鈥檚 scope. On top of the potential for sudden amendment or recission, each license comes with conditions that will affect how a transaction is structured. For example, contracts with the Venezuelan government or PdVSA generally must be governed by U.S. law and resolved in U.S. courts; payments to blocked parties generally must be routed through U.S.-controlled accounts; payments in cryptocurrency are prohibited; and transactions involving parties connected to Russia, Iran, North Korea, Cuba, or China are excluded. Companies should confirm that each of these conditions is satisfied before assuming a general license covers a proposed transaction.

Availability of Specific Licenses

Beyond the general licenses, OFAC has also shown more willingness to grant specific licenses for transactions that fall outside the general licenses but align with current policy objectives. For example, OFAC has indicated a favorable view toward licenses the resale of Venezuelan-origin oil for use in Cuba, despite the limitation against Cuban transactions under the general licenses.[7] Companies pursuing a transaction that is not squarely covered by a general license should consider whether a specific license application is a viable path forward.

Cautious Compliance Optimism

Internally, multinational compliance departments can move from blanket prohibitions on Venezuela-related activities, toward transactions-specific review. The operative compliance question is no longer: Does this transaction involve Venezuela? Rather, companies should now ask: does this Venezuelan-related transaction fall within the scope of an applicable general or specific license?

However, the same licensing mechanism that allows OFAC to expand commercial opportunities also allows OFAC to restrict or remove them. Unlike statutory sanctions relief, none of which is currently pending before Congress, the licensing framework rests entirely on OFAC鈥檚 discretionary licensing authority. General licenses can be amended, narrowed, suspended, or revoked with little or no notice, and businesses should not treat the current framework as a permanent normalization of U.S.-Venezuela economic relations.

OFAC has already exercised this power twice in recent history. OFAC has previously authorized specific companies’ Venezuela operations through individual licenses, only to reverse course and convert those authorizations into wind-down periods when political conditions changed. More recently, in June 2026, OFAC issued a general license authorizing the sale of Iranian oil, only to revoke it entirely just over two weeks later following renewed conflict with Iran.[8] Businesses should assume that the current Venezuela licenses could be reversed on a similarly short timeline if political or security conditions change, but this month鈥檚 reaffirmation of the validity of these licenses indicates they may remain durable.

Takeaways for Your Business

For prospective transactions involving Venezuelan parties,

• Assess whether a transaction fits within the scope of an applicable general license, including its conditions on counterparties, payment structures, and reporting obligations;
• Screen all counterparties against OFAC鈥檚 sanctions lists;
• Evaluate whether a specific license is needed, or would be advisable, for any activity not squarely covered by a general license; and
• Build flexibility into contracts and compliance programs through sanctions clauses, termination rights, and contingency planning, in case the underlying license is amended or revoked.

麻豆直播鈥檚 team of experienced trade and national security attorneys advises U.S. and multinational companies on sanctions compliance, export controls, and other regulatory issues affecting cross border operations, including in the energy sector. To discuss how 麻豆直播 & Lardner LLP can assist with navigating Venezuela鈥檚 General and Specific Licenses, contact Olivia Singelmann (osingelmann@foley.com), Jack Korba (jkorba@foley.com), Parker White (PWhite@foley.com), or Ahmad Murrar (AMurrar@foley.com).

This article was prepared with the assistance of 2026 summer associate JJ Gramlich.

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[1] See, e.g.,U.S. Department of the Treasury, Treasury Issues Venezuela General License 41 Upon Resumption of Mexico City Talks, Press Release (Nov. 26, 2022).

[2] Office of Foreign Assets Control, U.S. Department of the Treasury, General License No. 46A: Authorizing Certain Activities Involving Venezuelan-Origin Oil, 31 C.F.R. part 591 (June 2026) (amending General License No. 46 (Jan. 29, 2026)).

[3] Office of Foreign Assets Control, U.S. Department of the Treasury, General License No. 47A: Authorizing the Sale of U.S.-Origin Diluents to Venezuela, 31 C.F.R. part 591 (June 2026) (amending General License No. 47 (Feb. 3, 2026)).

[4] Office of Foreign Assets Control, U.S. Department of the Treasury, General License No. 48A: Authorizing the Supply of Certain Items and Services to Venezuela, 31 C.F.R. part 591 (June 2026) (amending General License No. 48 (Feb. 10, 2026)).

[5] Office of Foreign Assets Control, U.S. Department of the Treasury, General License No. 49A: Authorizing Negotiations of and Entry Into Contingent Contracts for Certain Investment in Venezuela, 31 C.F.R. part 591 (June 2026) (amending General License No. 49 (Feb. 13, 2026)).

[6] Office of Foreign Assets Control, U.S. Department of the Treasury, General License No. 50B: Authorizing Transactions Related to Oil or Gas Sector Operations in Venezuela of Certain Entities, 31 C.F.R. part 591 (June 2026) (amending General License No. 50 (Feb. 13, 2026)).

[7] Office of Foreign Assets Control, U.S. Department of the Treasury, FAQ 1238: Would OFAC approve the resale of Venezuelan origin oil to Cuba?

[8] John F. Korba, Olivia S. Singelmann & Teresa N. Taylor, OFAC Rescinds Iranian Sanctions Relaxation Following Renewed Conflict, 麻豆直播 & Lardner LLP (July 9, 2026).

In an era of heightened discretionary denial of inter partes review (IPR) petitions, petitioners have latched onto the second prong of the Advanced Bionics[1] framework to navigate the U.S. Patent and Trademark Office鈥檚 (USPTO鈥檚) evolving discretionary denial threshold.[2] Decided five years before the surge of discretionary denial decisions in 2025, the second prong of Advanced Bionics requires the Director to determine 鈥渨hether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims鈥� when the same or substantially the same art or arguments previously were presented to the Office.

One important lesson from the 2025-2026 discretionary denial decisions is that persuasive evidence of material error by the Office can be a significant factor in the Director鈥檚 holistic discretionary denial analysis, and may outweigh other factors that otherwise favor denial, including Fintiv factors 1-5 and settled expectations.[3] This insight is succinctly summarized by USPTO Director John Squires in Magnolia Medical Technologies, Inc. v. Kurin, Inc., IPR2026-00097, Paper 17 (Director May 14, 2026), where the Director reinforced the paramount importance of correcting examination error in the institution analysis.

This lesson aligns with prior USPTO guidance recognizing that 鈥渢he PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability.鈥�[4] In Magnolia, the Director also emphasized that America Invents Act (AIA) review must serve the public interest and operate as an alternative to, not a continuation of, a district court litigation.[5] The Director explained that 鈥渢he central purpose of IPRs is to determine whether the patent at issue may have been improvidently granted and whether and to what extent that right should continue to be recognized at all.鈥� The Director further stated that the Office institutes review 鈥渢o reconsider its own decision and correct a possible error in the original patent grant.鈥�

Over the past year, petitioners have developed creative ways to show that the Office erred in a manner material to the patentability of the challenged claims. Their arguments have been guided by the nonexclusive Becton, Dickinson factors,[6] MPEP 搂 904, Advanced Bionics, and more recent Director decisions, including Ecto World.[7] Categories of material error that have persuaded the Director not to exercise discretion to deny institution include overlooked references, inadequate prior art searches, allowance timing, and misapprehension of a reference鈥檚 teachings.

A. Examiner Errors Presented by Petitioners

At the beginning of the current era of heightened discretionary denial of IPR petitions, the Director typically provided a written opinion for each discretionary denial decision. That changed in October 2025, when the Director began issuing summary decisions that simply listed the cases that will be reviewed for the merits and non-discretionary considerations in a Notice of Decisions on Institutions. Because the Director typically no longer provides a detailed rationale for each decision, the following discussion summarizes a variety of Examiner error arguments that have been presented by petitioners. Some of these arguments have been expressly credited by the Director in various written decisions, while others remain developing theories that petitioners have advanced but that the Director may not yet have expressed a view on.

1. Overlooking References

A primary category of material error involves showing that the Examiner overlooked relevant prior art; whether the art appeared on an Information Disclosure Statement (IDS); was cited during prosecution of a related U.S., PCT, or foreign application; was addressed in related Patent Trial and Appeal Board (PTAB) proceedings; or has never appeared in the record. In opposing discretionary denial, petitioners have developed several pathways for showing overlooked prior art, including attacking the quality of the Examiner鈥檚 prior art search, showing that another Examiner identified or applied the reference or the same Examiner applied the reference in a later prosecution on related claims, demonstrating that the reasons for allowance conflict with prior PTAB or Federal Circuit determinations, pointing to insufficient consideration of a voluminous IDS, or highlighting unusually abbreviated prosecution (allowance timing).

• Quality of Prior Art Searches. The Examiner鈥檚 prior art search is frequently scrutinized for material error arguments. Petitioners have identified a wide range of specific deficiencies, including inadequate search time; flawed text and classification searches that excluded relevant classification codes; omitted or misspelled critical claim terms; overly narrow proximity constraints; focus on irrelevant classification codes; unduly narrow search parameters limited to certain technological classes; failure to search alternative configurations or the full breadth of the claims; failure to perform keyword searches on allegedly novel features; failure to search the U.S. publication database; and disregard of search strategies and results from counterpart applications.[8] Some petitioners have relied on expert testimony submitted with the IPR petition to further demonstrate the nature of the material error according to PTO search procedures.[9]
• Reference Identified by Another Examiner. Another powerful argument involves showing that during the prosecution of a different application in the same patent family either in the U.S. or abroad, another Examiner or the same Examiner identified and applied the overlooked prior art.[10]
• Voluminous IDS Submissions. Petitioners have also argued that relevant references were effectively buried in a voluminous IDS, with no indication of substantive consideration beyond the Examiner鈥檚 initials.[11] In one case, the overlooked references appeared among more than 1,000 IDS items, which is more than 40 times the size of a typical submission, and the applicant did not identify relevant references when asked. In another case, the IDS contained more than 400 references. Petitioners have also relied on a failure to initial an IDS or a failure to disclose related PTAB proceedings to further support a material-error theory.[12]
• PTAB Proceedings. Some petitioners established that the Examiner鈥檚 stated reason for allowance is contradicted by the teachings of the prior art or conflicts with prior PTAB or Federal Circuit determinations involving related patents directed to similar subject matter.[13]
• Timing of the Notice of Allowance. Petitioners have relied on early allowance as circumstantial evidence of insufficient examination scrutiny.[14] In particular, a first-office-action allowance, a short prosecution timeline, improper reliance on examination of a parent application, or the absence of any rejection during prosecution were used to support an inference that the Examiner did not fully evaluate the challenged claims against the most relevant art.
• Priority Issues. Petitioners have relied on the Examiner鈥檚 failure to properly determine the priority date of challenged claims to support arguments that relevant prior art references were overlooked during prosecution. For example, one petitioner asserted that the Examiner erred by failing to identify new references relied upon by petitioner because the Examiner had not recognized that a feature added during prosecution lacked support in the priority documents.[15] In another case, a petitioner argued that the Examiner erred by improperly disqualifying two proper references based on an incorrect priority date determination.[16] In a third case, a petitioner noted that the Examiner erroneously relied on references that did not qualify as prior art based on the correct priority date of the challenged claims.[17]

2. Misapprehending the Teachings of a Reference

When a reference was squarely before the Examiner, petitioners have established material error by demonstrating that the Office failed to appreciate or misunderstood the reference鈥檚 teachings.[18] The strongest arguments identify the exact teachings the Examiner missed and explain, limitation by limitation, how those teachings map onto the challenged claims.

B. Examiner Errors Expressly Credited by the Director

Among the theories petitioners have advanced in opposing discretionary denial, the Director has most clearly credited the following as bases for referring petitions to the Board for further consideration. The most persuasive reason credited by the Director is that the Examiner overlooked or misapprehended specific teachings of a prior art reference.

• Overlooking the Teachings of a Reference. When a reference was squarely before the Examiner, the Director declined to exercise discretion to deny institution where the Examiner overlooked or misunderstood specific teachings of that reference.[19] This was the most persuasive category of Examiner error credited by the Director. In one case, the Director found discretionary denial appropriate for four (4) of five (5) petitions based on settled expectations, but not for the fifth, even though that 鈥渃hallenged patent had [also] been in force for fifteen years鈥� because the petitioner provided 鈥減ersuasive reasoning, supported by evidence,鈥� that the Examiner overlooked teachings in a reference of record that appeared to disclose the features the Examiner believed were missing from the prior art.[20] In another case, the Director declined to deny institution even though the challenged patents had been in force for nine (9) years because the Examiner overlooked the teachings of a prior art reference cited in an IDS during prosecution that expressly teaches the features that the Examiner asserted were not taught by the prior art.[21]
• Terms of Art. The Director has also credited evidence suggesting that the Examiner misunderstood the claimed technology. For example, the Director credited evidence that an Examiner misunderstood a term of art or relied on the wrong reference to allow claims.[22] In one example, the Director declined to deny institution where the Examiner had maintained the same prior art from an ancestor application through the prosecution of six (6) child applications, even though those child applications were directed to different technologies.[23]
• Insufficient Prosecution History. Some decisions from the Director have suggested that abbreviated prosecution histories may be beneficial to the petitioner as well, perhaps suggesting an inadequate review by the Examiner. Some indicators of such an abbreviated prosecution history include first-office-action allowances; notices of allowance issued without substantive prior art rejections; and failure to address a reference during prosecution. For example, in two related cases, the Director declined to deny institution even when the challenged patents had been in force for seventeen (17) and eighteen (18) years. In those cases, the Director summarily concluded that the 鈥淸p]etitioner persuasively explains that the patent [E]xaminer erred by overlooking the teachings鈥� of the prior art reference.[24] Interestingly, despite the limited explanation for this finding, the Director noted that the Examiner had issued a first action allowance, suggesting this was a factor in the Director鈥檚 decision.[25] The Director also declined to deny institution of another challenged patent that had been in force for fifteen (15) years because 鈥渢he patent [E]xaminer [had] overlooked certain teachings in [the prior art reference] that appear to disclose the claimed features that the patent [E]xaminer indicated were not taught by the prior art of record.鈥�[26]
• Voluminous IDS. The Director also credited arguments that a voluminous IDS prevented substantive consideration of relevant references. Specifically, an IDS containing 鈥渙ver 1,000 references, which is over 40 times the size of a typical IDS,鈥� combined with an applicant鈥檚 failure to identify the most relevant references 鈥渕ay demonstrate that discretionary denial under 搂 325(d) is not warranted.鈥�[27] On remand in one such case, the Board agreed that 鈥渙ther than initials on a lengthy IDS, nothing in the record indicates that the Examiner substantively considered the references.鈥�[28]
• PTAB Proceedings. The Director has credited arguments based on the Examiner鈥檚 failure to 鈥渁pply any art or reference during prosecution despite the existence of PTAB proceedings of related patents that could impact the challenged claims,鈥� as well as cases where the Examiner鈥檚 reasoning contradicted prior Board or Court determinations.[29] For example, the Examiner found that the challenged claims of child applications were entitled to the priority date of the priority document even if the Board had previously determined that granted claims of the parent application were not entitled to that priority date; and that decision was affirmed by the Federal Circuit.[30] In another case, the Examiner allowed challenged claims without applying any prior art rejection 鈥渄espite the existence of PTAB proceedings of related patents.鈥�[31] In that case, the relevant prior art references were applied in previous PTAB proceedings.
• Reference Identified in Another Application Within the Same Family. Another persuasive showing credited by the Director is that another Examiner, or the same Examiner, identified and applied the overlooked art during prosecution of another application in the same family but failed to similarly apply it in the challenged patent. In one case, the Examiner allowed the challenged claims based on an alleged new feature but subsequently rejected claims of a pending child application of the challenged patent for being unpatentable because the prior art taught the previously allowable feature.[32] In another case, the Examiner applied a reference during the prosecution of a parent application but failed to apply that reference during the prosecution of the challenged patent, which included similar claim limitations.[33]

C. Key Takeaways for Practitioners

The following ten (10) principles distill the current state of the Director鈥檚 material error jurisprudence into actionable guidance.

1. Identify material error that can overcome other denial factors, including Fintiv. Correction of examination errors has been deemed of paramount importance even for patents that have been in force for 15-18 years.
2. Mine the prosecution history. Review the Examiner鈥檚 search queries, methodology, time spent, classification codes, and keyword terms to identify deficiencies that led to prior art being overlooked. Compare the Examiner鈥檚 search queries and methodology with counterpart PCT or EPO search results to identify gaps. Any deficiency that can be tied to the Examiner鈥檚 failure to locate the prior art strengthens the material error argument.
3. Check related applications. Prosecution histories of child applications, parent applications, and PCT counterparts are fertile ground for finding that another Examiner identified art the original Examiner missed.
4. Compare U.S. prosecution with foreign prosecution. If the EPO or another foreign office applied more rigorous examination to counterpart applications, highlight the contrast to underscore the insufficiency of the USPTO鈥檚 review.
5. Scrutinize voluminous IDSs. Mere initialing by the Examiner does not constitute substantive consideration. It is unlikely that an Examiner had substantively reviewed over 200 references. According to the USPTO, 87% of applications have 50 or fewer references.[34]
6. Show specific teachings. Do not merely assert that the Examiner overlooked the art. Demonstrate precisely what the reference teaches and how it maps onto the claim limitations. This is perhaps the most fact-intensive category of material error, but it is also among the most compelling.
7. Leverage the notice of allowance. Conclusory reasons for allowance, or reasons that contradict prior PTAB or Federal Circuit findings, are strong indicators of material error.
8. First-office-action allowances and early allowances are red flags. Document the timeline from filing to allowance. An unusually short prosecution, particularly where no prior art was applied, supports an inference that the Examiner did not conduct a thorough review. These circumstances significantly ease the petitioner鈥檚 burden of showing material error.
9. Use expert declarations to bridge evidentiary gaps. When the prosecution history alone does not clearly reveal the error, expert testimony can establish what the art teaches and how the Examiner鈥檚 evaluation was deficient.
10. Track developing case law. Many petitions that survived the discretionary denial threshold on material error grounds were not instituted on the merits, and those that were ultimately instituted are expected to reach final written decisions in late 2026 or early 2027. Their outcomes may further shape this rapidly developing area of PTAB practice. We will continue to monitor these developments.

For companies navigating parallel litigation, portfolio enforcement, or PTAB strategy, these decisions underscore the importance of developing a record that addresses both discretionary-denial considerations and the merits from the outset.

For more information on how these developments may affect your patent portfolio or litigation strategy, please contact the authors or your 麻豆直播 & Lardner attorney.

---

[1] Advanced Bionics, LLC v. MED-EL Elektromedizinische Ger盲te GmbH, IPR2019 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)

[2] Interim Processes for PTAB Workload Management, at 1 (Mar. 26, 2025) (bifurcating the decision to institute an IPR or a post-grant review (PGR) into two processes 鈥�(i) discretionary considerations and (ii) merits and other non-discretionary statutory considerations.鈥�)

[3] iRhythm Tech. v. Welch Allyn, Inc., IPR2025-00363, Paper 10, at 3 (June 6, 2025) and Paper 7, at 29鈥�1 (granting Patent Owner鈥檚 request for discretionary denial and denying Institution of inter partes review because the Petitioner鈥檚 decades-long delay to seek review of the challenged patents created an implicit expectation and an acquiescence of the validity of the challenged claims.)

[4] Commscope Tech. LLC v. Dali Wireless, Inc. IPR2022-01242 Paper 23 at 4 (PTAB Feb 27, 2023) (precedential) (citing USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (鈥淕uidance Memo鈥�) at 5 (June 21, 2022)).

[5] Denying institution of inter partes review because the Director viewed the petition as falling outside the purpose of AIA reviews. Specifically, the petitioner had filed an IPR to relitigate the same issues raised in district court after a jury found the patent not invalid. Id. at 9鈥�10.

[6] Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to 搂 III.C.5, first paragraph).

[7] Ecto World LLC v. Rai Strategic Holdings Inc., IPR2024-01280, Paper 13 at 7n3 (PTAB May 19, 2025) (Granting director review, vacating the decision denying institution, and remanding to the Board for further proceedings; and clarifying that a petitioner cannot simply rely on the unpatentability contentions articulated in the IPR petition. Rather, petitioners must explain how the Examiner erred 鈥渆ven when the asserted prior art is on an IDS, but the Examiner did not apply the reference.鈥�)

[8] Taiwan Semiconductor Manufacturing Co. Ltd. v. Marlin Semiconductor Ltd., IPR2025-01082, Paper 7, 2鈥�11, and 3n1 & Paper 10 (PTAB Dec. 18, 2025); Samsung Elecs Co., Ltd. v. Wilus Institute of Standards and Tech., Inc., IPR2025-01043, Paper 9, 20鈥�27; Samsung Elecs. Co. Ltd. v. Wilus Institute of Standards and Tech Inc., IPR2025-00934, Paper 9 at 3 and 17鈥�32 (PTAB Oct. 10, 2025); Samsung Elecs. Co. Ltd. v. Wilus Institute of Standards and Tech Inc., IPR2025-01044, paper 9, at 21鈥�29; IPR2025-01069, Paper 9 at 20鈥�25; Samsung Elecs. Co. Ltd. v. Wilus Institute of Standards and Tech Inc., IPR2025-01110, Paper 10, at 8鈥�9; Samsung Elecs. Co. Ltd. v. Wilus Institute of Standards and Tech Inc., IPR2025-01111, Paper 9, at 7鈥�8; Anthony, Inc. v. ControlTec, LLC, IPR2025-00559, Paper 12 (PTAB, Jul. 16, 2025); ASUSTeK Computer Inc. v. Nokia Techs. Oy, IPR2025-01153, Paper 11, at 9 (Oct. 7, 2025) and Paper 13 (PTAB Nov. 20, 2025) (the following proceedings will be reviewed for merits and non-discretionary considerations); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00204, Paper 9, at 13鈥�17 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00205, Paper 9, at 12鈥�16 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00219, Paper 9, at 12鈥�16 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00222, Paper 9, at 13鈥�16 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00227, Paper 11, at 10鈥�14 ; (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00228, Paper 11, at 9 and 12鈥�16 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00229, Paper 11, at 12鈥�16 (April 27, 2026); Samsung Electronics Co., Ltd. v. Wilus Institute of Standards, IPR2025-00935, Paper 11, 21鈥�24 (Sept. 02, 2025); and Taiwan Semiconductor Manufacturing Co. Ltd. v. Marlin Semiconductor Ltd., IPR2025-00200, Paper 8, at 2鈥�8; Yealink Network Technology Co., Ltd. v. Barco N.V., IPR2025-00491, Paper 15, at 6鈥�9 (failure to cite examples of well-known unified communication systems and software).

[9] IPR2025-01082, Paper 7, at 3n1.

[10] Samsung Elecs. Co. Ltd. v. Wilus Institute of Standards and Tech Inc., IPR2025-00934, Paper 9 at 3 and 17鈥�32 (PTAB Oct. 10, 2025); ASUSTeK Computer Inc. v. Nokia Techs. Oy, IPR2025-01153, Paper 11, at 8鈥�14 (Oct. 7, 2025) and Paper 13 (Squires Nov. 20, 2025; Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00204, Paper 9, at 10 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00205, Paper 9, at 12鈥�16 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00219, Paper 9, at 12鈥�16 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00222, Paper 9, at 1 and 15鈥�16 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00227, Paper 11, at 15 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00228, Paper 11, at 9 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00228, Paper 11, at 16 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00229, Paper 11, at 15鈥�16 (April 27, 2026); Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1, IPR2025-00701, Paper 8, at 2 (July 16, 2025); Harbor Freight Tools USA Inc. v. Champion Power Equipment, Inc., IPR2025-00805, Paper 14, at 29鈥�35 (Aug. 29, 2025).

[11] Ecto World LLC v. Rai Strategic Holdings Inc., IPR2024-01280, Paper 15 at 5鈥�7 (June 2, 2025); Alliance Laundry Systems, LLC v. Payrange LLC, IPR2025-00573, Paper 7, at 13鈥�16, and 23鈥�26 (July 07, 2025).

[12] ASUSTeK Computer Inc. v. Nokia Techs. Oy, IPR2025-01153, Paper 11, at 11 (Oct. 7, 2025); Paper 13 (Squires Nov. 20, 2025); Alliance Laundry Systems, LLC v. Payrange LLC, IPR2025-00573, Paper 7, at 15 and 23鈥�26 (July 07, 2025).

[13] Alliance Laundry Systems, LLC v. Payrange LLC, IPR2025-00573, Paper 7, at 15 and 26 (July 07, 2025); Padagis US LLC v. Neurelis, Inc., IPR2025-00464, Paper 10, 16鈥�19 (June 16, 2025).

[14] Anthony, Inc. v. ControlTec, LLC, IPR2025-00559, Paper 9, at 16 (PTAB, Jul. 16, 2025) (asserting that the Examiner allowed the claims without issuing a prior art rejection. 鈥淸T]he Examiner erred materially by failing to evaluate the prior art thoroughly. Had the Examiner evaluated the prior art thoroughly, he would not have allowed the challenged claims to issue without a single prior art rejection.鈥�); Samsung Elecs. Co. Ltd. v. Wilus Institute of Standards and Tech Inc., IPR2025-01069, Paper 9 at 18鈥�20 (application allowed with no prior art rejections); USAA Federal Savings Bank v. PACid Technologies, LLC, IPR2025-00697, Paper 8, at 3 and 24 (PTAB Aug. 14, 2025) (claims were allowed four months after filing with little to no scrutiny, and without any prior patentability challenge and without a single prior art rejection). See also, IPR2025-00751, paper 8, at 3, and 24鈥�25; IPR2025-00752, paper 8, at 3 and 24; IPR2025-00753, paper 8, at 3 and 24鈥�25; IPR2025-00754, page 8 at 3 and 24; and IPR2025-00755, page 8 at 3 and 24; Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00204, Paper 9, at 10鈥�12 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00222, Paper 9, at 1, 10 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00227, Paper 11, at 10 and 14 (April 27, 2026); Alliance Laundry Systems, LLC v. Payrange LLC, IPR2025-00573, Paper 7, at 13鈥�16, and 23鈥�26 (July 07, 2025); Microsoft Corp. v. Partec Cluster Competence Cent. GmbH, IPR2025-00318, Paper 8, at 11鈥�12 (allowance after a single Office action).

[15] Samsung Elecs Co., Ltd. v. Wilus Institute of Standards and Tech., Inc., IPR2025-01110, Paper 10, at 7鈥�8 (challenging the priority date of the challenged patent based on intervening prior art references); IPR2025-01111, Paper 9, at 6鈥�7 (also citing IPR2025-00933, Paper 2, at 2; IPR2025-01043, Paper 2, at 2鈥�4; IPR2025-00935, Paper 2,at 2鈥�3; IPR2025-00936, Paper 2, at 2鈥�3; and IPR2025-01110, Paper 2, at 5鈥�12).

[16] Padagis US LLC v. Neurelis, Inc., IPR2025-00464, Paper 10, at 16鈥�19 (June 16, 2025) and Paper 12, at 2鈥�3 (Director, July 16, 2025) (Informative) (finding that the petition raises 鈥渢he same priority issue鈥� that was previously adjudicated in IPR2019-00451 and affirmed by the Court of Appeals for the Federal Circuit).

[17] Alliance Laundry Systems, LLC v. Payrange LLC, IPR2025-00573, Paper 7, at 13n3 (July 07, 2025).

[18] Samsung Elecs Co., Ltd. v. Wilus Institute of Standards and Tech., Inc., IPR2025-01043, Paper 9, 18鈥�20; IPR2025-00933, Paper 11 at 3鈥�4 (PTAB Oct. 10, 2025) and paper 9, at 3 and 18鈥�31; IPR2025-00934, Paper 11 at 4 (PTAB Oct. 10, 2025); IPR2025-00988, paper 9, at 19鈥�26; Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00222, Paper 14 (PTAB June 15, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00205, Paper 9, at 10鈥�12 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00219, Paper 9, at 10鈥�12 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00222, Paper 9, at 1, 12鈥�16 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00227, Paper 11, at 12 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00228, Paper 11, at 9鈥�11 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00229, Paper 11, at 11鈥�12 (April 27, 2026); Harbor Freight Tools USA Inc. v. Champion Power Equipment, Inc., IPR2025-00805, Paper 14, at 29鈥�38 (Aug. 29, 2025); Samsung Electronics Co., Ltd. v. Wilus Institute of Standards, IPR2025-00935, Paper 11, 17鈥�21 (Sept. 02, 2025); Taiwan Semiconductor Manufacturing Co. Ltd. v. Marlin Semiconductor Ltd., IPR2025-00847, Paper 11, 3鈥�4 (Director Sept. 3, 2025)(Paper 10, Petitioner鈥檚 Opposition to Patent Owner鈥檚 Request for Discretionary Denial of Institution is not publicly available); Xencor, Inc. v. Merus N.V., IPR2025-00604, Paper 8, at 14鈥�17, and Paper 12, at 2鈥�3 (PTAB July 17, 2025); Microsoft Corp. v. Partec Cluster Competence Cent. GmbH, IPR2025-00318, Paper 8, at 11鈥�12 and Paper, 12 at 2鈥�3 (PTAB June 12, 2025); Yealink Network Technology Co., Ltd. v. Barco N.V., IPR2025-00491, Paper 15, at 6鈥�9.

[19] Samsung Elecs Co., Ltd. v. Wilus Institute of Standards and Tech., Inc., IPR2025-00933, Paper 11 at 3鈥�4 (PTAB Oct. 10, 2025); IPR2025-00934, Paper 11 at 4 (PTAB Oct. 10, 2025)( referring IPR2025-00988, IPR2025-01043, IPR2025-01044, IPR2025-01069, IPR2025-01110, and IPR2025-01111 to the Board); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00204, 00205, 00219, 00222, 00227, 00228, and 00229, Paper 14 (PTAB June 15, 2026) and Paper 11 (May 19, 2026); Harbor Freight Tools USA Inc. v. Champion Power Equipment, Inc., IPR2025-00805, Paper 20, at 2鈥�3 (Sept. 19, 2025); Samsung Electronics Co., Ltd. v. Wilus Institute of Standards, IPR2025-00935, Paper 12, 2鈥�3 (Sept. 26, 2025); IPR2025-00847, Paper 11, 3鈥�4 (PTAB Sept. 3, 2025 (finding discretionary denial of institution inappropriate in one out of five cases); Xencor, Inc. v. Merus N.V., IPR2025-00604, Paper 12, at 2鈥�3(PTAB July 17, 2025) (referring the Petitions to the Board even if the challenged patent had been in force for nine years because petitioner presented persuasive evidence that a prior art cited in the IDS during prosecution teaches the allowable limitation); Microsoft Corp. v. Partec Cluster Competence Cent. GmbH, IPR2025-00318, Paper 9, at 2鈥�3 (June 12, 2025); Yealink Network Technology Co., Ltd. v. Barco N.V., IPR2025-00491, Paper 18, at 2鈥�3 (PTAB June 25, 2025).

[20] IPR2025-00847, Paper 11, 3鈥�4 (IPR2025-00847, Paper 10, Petitioner鈥檚 Opposition to Patent Owner鈥檚 Request for Discretionary Denial of Institution is not publicly available and IPR2025-00847, Paper 1, Petition for Inter Partes Review, does not refer to Chien et al. (US Pat. 6,815,770, Nov. 9, 2004 (Ex. 1037); reference was only disclosed in IPR2025-00847, Paper 8, filed August 15, 2025).

[21] Xencor, Inc. v. Merus N.V., IPR2025-00604, Paper 12, at 2鈥�3 (PTAB July 17, 2025).

[22] Yealink Network Technology Co., Ltd. v. Barco N.V., IPR2025-00491, Paper 18, at 2鈥�3 (PTAB June 25, 2025); USAA Federal Savings Bank v. PACid Technologies, LLC, IPR2025-00697, Paper 9, at 3 (PTAB Aug. 14, 2025) (allowed claims of a child application directed to one technology based on the prior references cited in the parent application, which was directed on a different technology)

[23] IPR2025-00697, Paper 9, at 3 (PTAB Aug. 14, 2025)

[24] Anthony, Inc. v. ControlTec, LLC, IPR2025-00559, Paper 12, at 2 (PTAB, Jul. 16, 2025)

[25] Id.

[26] IPR2025-00847, Paper 11, 3鈥�4 (Director Sept. 3, 2025).

[27] Ecto World LLC v. Rai Strategic Holdings Inc., IPR2024-01280, Paper 13 at 7 (PTAB May 19, 2025); and Paper 16, at 11鈥�15 (PTAB June 25, 2025, on remand) (denying institution of inter partes review on remand under 35 U.S.C. 搂 314(a))

[28] Id. Paper 16, at 13.

[29] Alliance Laundry Systems, LLC v. Payrange LLC, IPR2025-00573, Paper 9, at 2 (PTAB July 17, 2025); Padagis US LLC v. Neurelis, Inc., IPR2025-00464, Paper 12, 3 (Director July 16, 2025) (Informative).

[30] IPR2025-00464, Paper 12, 3 (Director July 16, 2025) (Informative).

[31] IPR2025-00573, Paper 9, at 2 (PTAB July 17, 2025).

[32] Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1, IPR2025-00701, Paper 9, at 2 (PTAB Aug. 14, 2025)

[33] Harbor Freight Tools USA Inc. v. Champion Power Equipment, Inc., IPR2025-00805, Paper 20, at 2鈥�3 (Sept. 19, 2025).

[34] Ecto World LLC v. Rai Strategic Holdings Inc., IPR2024-01280, Paper 13 at 5鈥�6 (PTAB May 19, 2025)

This episode features a conversation with John Stillman. John is a summer associate in 麻豆直播鈥檚 Chicago office focused on litigation. In this discussion, John reflects on growing up in Oak Law, IL, and earning his BA and Masters, in business administration, from the Bradley University before attending the University of Wisconsin Law School and transferring to Notre Dame Law School. John reflects on his experience as a summer associate, including the assignments and various summer associate events. He also shares wonderful advice on the importance of seeking mentorship and the importance of embracing challenges head on.

闯辞丑苍鈥檚&苍产蝉辫;笔谤辞蹿颈濒别:

• Title: Summer Associate
• 麻豆直播 Office: Chicago
• Hometown: Oak Lawn, IL
• College: Bradley University
• Law School: Notre Dame Law School

Click here for full list of The Path & The Practice episodes.

You can also find, and subscribe, to this podcast on all major podcast platforms including , ,  and .

This episode features a conversation with Peyton Recer. Peyton is a summer associate in 麻豆直播鈥檚 Tampa office focused on real estate. In this discussion, Peyton reflects on growing up in Windermere, FL, and earning her BA and Master鈥檚 degree, in real estate, from the University of Florida before attending University of Miami School of Law. She shares her approach to law school, including how she studies and prepares for exams. Peyton also reflects on her experience as a summer associate, including the assignments and various summer associate events. She also shares wonderful advice on the importance of networking and relationship building.

笔别测迟辞苍鈥檚&苍产蝉辫;笔谤辞蹿颈濒别:

• Title: Summer Associate
• 麻豆直播 Office: Tampa
• Hometown: Windermere, FL
• College: University of Florida
• Law School: University of Miami School of Law

Click here for full list of The Path & The Practice episodes.

You can also find, and subscribe, to this podcast on all major podcast platforms including , ,  and .

This episode features a conversation with Donavon Lea. Donavon is 2L summer associate in 麻豆直播鈥檚 Los Angeles office focused on health care. In this discussion, Donovan reflects on growing up in Virginia Beach, VA, and earning his BA and MPH from the University of Virginia before attending UCLA for law school. He reflects on the variety of work experience he gained in undergrad, including serving as a CDC Public Health Law Fellow. Donavon describes his experience as a summer associate and provides advice to prospective and current law students, emphasizing the importance of openness to unexpected opportunities and the importance of maintaining a learner鈥檚 mindset. 

顿辞苍补惫辞苍鈥檚&苍产蝉辫;笔谤辞蹿颈濒别:

• Title: Summer Associate
• 麻豆直播 Office: Los Angeles
• Hometown: Virginia Beach, VA
• College: University of Virginia
• Law School: University of California, Los Angeles

Click here for full list of The Path & The Practice episodes.

You can also find, and subscribe, to this podcast on all major podcast platforms including , ,  and .