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USPTO Order Initiating Director Review of Inter Partes Review

Favicon for www.uspto.gov USPTO Director Review Status
Filed March 13th, 2026
Detected March 20th, 2026
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Summary

The USPTO Director has initiated a sua sponte review of decisions granting inter partes review (IPR) in cases involving Advanced Micro Devices, Inc. and Pensando Systems, Inc. (Petitioners) against XtreamEdge, Inc. (Patent Owner). This review is prompted by the Patent Owner's request alleging Petitioners violated a stipulation by raising invalidity challenges in parallel district court litigation that could have been raised in the IPR.

What changed

The USPTO Director has initiated a sua sponte review of decisions granting inter partes review (IPR) in cases involving Advanced Micro Devices, Inc. and Pensando Systems, Inc. (Petitioners) against XtreamEdge, Inc. (Patent Owner). This review is prompted by the Patent Owner's request alleging Petitioners violated a stipulation by raising invalidity challenges in parallel district court litigation that could have been raised in the IPR. The Director has authorized the Patent Owner to file a motion to vacate the institution decisions and terminate the proceedings, with specific page limits and deadlines for filings.

Regulated entities, particularly those involved in patent litigation and IPR proceedings, should note this action as it highlights the importance of adhering to stipulations regarding the scope of challenges in parallel proceedings. The USPTO is closely scrutinizing potential violations of such agreements. Affected parties must adhere to the strict filing deadlines of March 20, 2026, for the Patent Owner's motion and March 27, 2026, for the Petitioners' response. Failure to comply with these deadlines or the terms of the stipulation could lead to termination of proceedings.

What to do next

  1. Patent Owner to file a motion to vacate and terminate by March 20, 2026.
  2. Petitioners to file a response by March 27, 2026.
  3. Review and adhere to Sotera stipulations in parallel litigation and IPR proceedings.

Source document (simplified)

____________ ____________ ________________ ________________ DirectorPTABDecisionReview@uspto.gov Paper 25 571.272.7822 Date: March 13, 2026 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE OFFICE OF THE UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE ADVANCED MICRO DEVICES, INC. and PENSANDO SYSTEMS, INC., Petitioner, v. XTREAMEDGE, INC., Patent Owner. Before JOHN A. SQUIRES, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. ORDER Initiating Sua Sponte Director Review and Authorizing Motion to Vacate and Terminate the Proceedings This Order applies to each of the listed cases. The parties may not use this type of caption without prior authorization.

On November 6, 2025, the Board issued a Decision granting inter partes review (“IPR”) in the above-referenced proceedings. Paper 14 (“Decision”). On March 9, 2026, XtreamEdge, Inc. (“Patent Owner”) sent an email to the Board requesting authorization to file a motion to vacate the institution decisions and terminate the proceedings (“Request”). Ex. 3102. In the Request, Patent Owner raises concerns that Advanced Micro Devices, Inc. and Pensando Systems, Inc. (“Petitioners”) have violated their Sotera stipulation (Ex. 1048) by raising invalidity challenges in a parallel district court litigation that they raised or reasonably could have raised in the above- identified IPR proceedings. I have reviewed the Decision, the Request, and the relevant exhibits and determine that Director Review of the Decision is appropriate to consider whether Petitioners have violated their Sotera stipulation. The allegations in Patent Owner’s Request raise serious concerns, especially in view of Petitioners’ district court invalidity contentions, which appear to incorporate by reference the IPR petitions. See, e.g., Ex. 3103, 10. Accordingly, I authorize Patent Owner to file a motion to vacate the institution decisions and terminate the IPRs. Patent Owner shall file a motion of no more than fifteen pages by March 20, 2026. Petitioners shall file a response of no more than fifteen pages by March 27, 2026. Additional All citations are to IPR2025-00223. The parties filed similar papers and exhibits in all cases. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (Dec. 1, 2020) (precedential as to § II.A). In a Sotera stipulation, a petitioner represents that it will not raise in district court any ground it raised or reasonably could have raised in the inter partes review.

evidence is not authorized at this time, except as necessary to show whether Petitioners have violated their Sotera stipulation. An opinion will issue in due course. Accordingly, it is: ORDERED that a sua sponte Director Review of the Board’s decisions granting institution of inter partes review is initiated; FURTHER ORDERED that the proceedings are stayed pending a decision on Director Review or separate order lifting the stay; FURTHER ORDERED that Patent Owner is authorized to file a fifteen-page brief addressing the issues set forth above no later than March 20, 2026; FURTHER ORDER that Petitioners are authorized to file a fifteen- page response no later than March 27, 2026; and FURTHER ORDERED that an opinion will issue in due course.

For PETITIONER: Harper Batts Chris Ponder Jeffrey Liang James Young Hurt SHEPPARD, MULLIN, RICHTER & HAMPTON LLP hbatts@sheppardmullin.com cponder@sheppardmullin.com jliang@sheppardmullin.com jhurt@sheppardmullin.com For PATENT OWNER: Michael Matulewicz-Crowley Christine E. Lehman Peter J. Park Zachary Jacobs REICHMAN JORGENSEN LEHMAN & FELDBERG LLP mmatulewicz-crowley@reichmanjorgensen.com clehman@reichmanjorgensen.com ppark@reichmanjorgensen.com zjacobs@reichmanjorgensen.com

Named provisions

Director Review Sotera Stipulation

Classification

Agency
USPTO
Filed
March 13th, 2026
Compliance deadline
March 20th, 2026 (1 days ago)
Instrument
Enforcement
Legal weight
Binding
Stage
Final
Change scope
Substantive
Document ID
IPR2025-00223
Docket
IPR2025-00223

Who this affects

Applies to
Legal professionals
Industry sector
5411 Legal Services
Activity scope
Inter Partes Review Patent Litigation
Geographic scope
United States US

Taxonomy

Primary area
Intellectual Property
Operational domain
Legal
Topics
Patent Law Administrative Law

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