USPTO Director Sends PTAB Unpatentability Decision To Rehearing Panel In Light Of Contrary Jury Verdict

In response to a request for a Director Review of a PTAB decision finding claims 1-4 and 6 of U.S. Patent No. 7,594,168 unpatentable, the Director of the United States Patent and Trademark Office (“USPTO”), on May 1, 2026, referred this review to a Delegated Rehearing Panel (“DRP”).  The DRP is to determine whether petitioners had presented “meaningfully different evidence and arguments” to the PTAB compared to what had been presented to the jury in a district court action that reached a finding that patent had not been proven invalid.  Facebook, Inc. v. Express Mobile, Inc., IPR2021-01226, Paper 65 (May 1, 2026). In referring this review, the Director of the USPTO stated that the PTAB panel “effectively disregard[ed]” the September 16, 2025 Memorandum re prior findings of fact and conclusions of law. IPR 2021-01226, Paper 65 at 4.  The Memorandum requires the Board to explain why a different outcome is warranted when it reaches a finding or conclusion different from a prior adjudication, with a more detailed explanation required when the same or substantially the same evidence or arguments were presented. 

This IPR was on remand from the U.S. Court of Appeals for the Federal Circuit, which, on June 17, 2025, had vacated a prior unpatentability decision on the basis of an improper claim construction of the word “style” and had adopted patent owner’s construction of that term, and remanded to the PTAB for “further proceedings consistent with this opinion.” 

Meanwhile, in the District of Delaware, there was an ongoing jury trial on these same claims involving a defendant unrelated to the IPR petitioners.  In that case, the jury found that the defendant had not proven by clear and convincing evidence that claim 1 of the patent was not invalid.  IPR 2021-01226, Exhibit 2023.  The jury found the patent (and an additional patent) were infringed, awarded $170 million in damages, and found the infringement to be willful.  The outcome of this trial was briefed and presented to the PTAB panel during their deliberations.  On January 16, 2026, the panel issued their Final Written Decision finding the challenged claims unpatentable.  IPR 2021-01226, Paper 60. 

The Director’s referral states that the PTO panel had determined that “the same or substantially the same issues of obviousness were presented during the district court trial.”  IPR 2021-01226, Paper 65 at 3.  In the referral, the Director faulted the PTAB panels for failing to provide a detailed explanation beyond being “bound by the Federal Circuit’s mandate.”  Specifically, the referral states that the Federal Circuit mandate “did not require the Board to ignore intervening adjudications from other tribunals.”  Additionally, the PTAB panel is faulted for relying on the district court defendant’s expert testimonies that the jury apparently did not find persuasive. 

On May 4, 2026, the DRP was identified as consisting of three Acting Vice Chief APJs.  Per the terms of the referral to the DRP, their findings are due June 30 (absent good cause).  The DRP is to address both whether there is sufficient reason for the PTAB determination to differ from the jury determination and whether the panel had correctly determined that petitioners new claim mappings on remand were timely.