Squires Vacates-in-Part PTAB Decision Due to Board’s Failure to Address Jury Verdict in Parallel Litigation

In an order issued earlier this week, U.S. Patent and Trademark Office (USPTO) Director John Squires granted Director Review and partially vacated a Patent Trial and Appeal Board (PTAB) Final Written Decision that found several claims of U.S. Patent No. 11,828,425 unpatentable as obvious. Squires remanded the case after finding that the Board did not explain why its conclusion as to claim 2 differed from the outcome of a parallel district court proceeding on the same claim.

The Board’s Final Written Decision, issued January 22 and corrected February 9, found claims 2, 4, 9–12, and 17 of the ‘425 patent unpatentable as obvious based on Samsung Display Co., Ltd.’s inter partes review (IPR) petition.

Pictiva Displays International Ltd. sought Director Review after a jury in the Eastern District of Texas found on November 3, 2025, that claim 2 of the ‘425 patent was infringed and not invalid in Pictiva Displays International, Ltd. v. Samsung Electronics Co. Following the verdict, Pictiva notified the Board on November 18, 2025, and Samsung Display responded on November 23, 2025. The Board’s Final Written Decision did not discuss those submissions or the jury verdict as to claim 2.

Pictiva argued that the Board failed to address the jury verdict or explain why a different outcome from the verdict was warranted in the IPR proceeding. Pictiva also contended that Samsung Display’s invalidity challenge was substantially similar to the one raised in the district court. Samsung Display responded that its invalidity challenge was based on prior art and evidence different from that raised in the district court litigation.

Squires pointed to a September 16, 2025, USPTO memorandum, “PTAB Consideration of Prior Findings of Fact and Conclusions of Law,” addressing situations where the Board reviews claims that have already been adjudicated in district court. The memorandum provides that if the Board reaches “[a] final decision on a finding of fact or conclusion of law that is different than the prior finding or conclusion of the…district court…, the Board shall explain in the…final written decision why a different outcome is warranted.” The memorandum further provides that “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 district court…are being relied upon in the subsequent AIA trial proceeding.”

Contrary to the memorandum, “the Board did not explain why its outcome as to claim 2, which differed from that of the district court’s adjudication, is warranted.” The order also applied to claim 17, which Squires noted was substantially similar to claim 2 and which the Decision had considered together with claim 2.

As a result, the Final Written Decision was vacated as to claims 2 and 17, and the case was remanded to the Board to consider the submissions regarding the district court proceeding. On remand, if the Board maintains findings or conclusions different from the district court, it must explain why a different outcome is warranted. If the Board finds that Samsung Display’s challenges rely on the same or substantially the same evidence and arguments as those presented in district court, a more detailed explanation is required, consistent with the memorandum. Squires ordered the Board to issue its remand decision within 30 days, absent good cause, and found Pictiva’s remaining Director Review arguments unpersuasive.