Squires Orders Sua Sponte Review of ASUS IPR Due to Potential Sotera Violation

United States Patent and Trademark Office (USPTO) Director John Squires initiated a sua sponte Director Review on May 27 to investigate whether an inter partes review (IPR) petitioner violated its Sotera stipulation. The order stays the IPR proceeding and requires briefing from Nokia Technologies OY, ASUSTeK Computer Inc., and ASUS Computer International on whether a violation occurred and what the appropriate remedy should be.

The dispute originates from an IPR petition filed by ASUS challenging U.S. Patent No. 10,536,714, which is owned by Nokia. The ‘714 patent, issued on January 14, 2020, covers a “Method for coding and an apparatus” used in H.264 and H.265 video coding technology. The patent has been the subject of multiple proceedings, including a prior U.S. International Trade Commission (ITC) investigation where the ITC held the challenged claims valid.

To address Nokia’s arguments for discretionary denial under the Patent Trial and Appeal Board’s (PTAB’s) Fintiv doctrine, ASUS submitted a Sotera stipulation. Under the precedential decision in Sotera Wireless, Inc. v. Masimo Corp., such a stipulation represents a binding commitment by the petitioner that, if the PTAB institutes review, the petitioner will not raise in other forums any ground it raised or reasonably could have raised in the IPR. These stipulations are used by petitioners to reduce the risk that their petitions will be denied in favor of parallel district court or ITC proceedings.

In its earlier request for a discretionary denial, Nokia argued that the PTAB should refuse to institute the IPR due to the advanced state of the parallel ITC proceedings. Nokia noted that the parallel investigation, Investigation No. 337-TA-1448, was scheduled for a January 2026 trial date, nearly a year before the PTAB’s projected January 2027 deadline for a final written decision. It also noted that both Nokia and ASUS had already invested substantial resources in the ITC case. Additionally, Nokia stated that the ‘714 patent had already survived a validity challenge in the earlier ITC investigation, where the same prior art combinations were asserted by other respondents. Nokia further stated that ASUS had been in licensing negotiations since at least 2017 and was aware of Nokia’s video licensing program, which includes over 50 license agreements.

Despite these arguments, Squires instituted the IPR on December 11, 2025, and relied on ASUS’s Sotera stipulation to address concerns of duplicative litigation. Under standard USPTO regulations, any request for Director Review of an institution decision must be filed within 14 days, which meant Nokia’s deadline was December 29, 2025. However, on May 8, Nokia filed a request for Director Review, alleging that ASUS had violated its Sotera stipulation by asserting the same invalidity theories in the parallel, co-pending ITC investigation.

Nokia’s request on May 14 was dismissed as untimely. Director Squires then intervened sua sponte, noting that the alleged violation occurred after the filing deadline had passed. Squires stated that Nokia’s allegations “raise serious concerns given that Petitioners’ briefing in the ITC investigation appears to raise the same invalidity theories argued in the IPR petition.”

The IPR proceeding is now stayed pending a decision on Director Review or a separate order lifting the stay. Both Nokia and ASUS are authorized to file briefs of no more than 15 pages by June 2, 2026, addressing whether a violation occurred and the appropriate remedy. The order limits additional evidence to that necessary to determine whether a violation of the stipulation occurred.

The sua sponte order marks the latest in a series of moves by Squires and his administration to crack down on perceived abuses of IPR and PGR proceedings, with the aim of reducing inefficiencies in the PTAB system.

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Author: donscarpo
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