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Since the introduction of the new bifurcated scheme for director review, the Office has identified "changes in the law" as a potential reason an IPR might be referred for a decision rather than discretionarily denied, but has not issued any decisions actually relying on this factor—until now. Director Squires' decision in Top Glory Trading Group Inc. and DP Dream Pairs Inc. v. Cole Haan LLC, IPR2025-01395, Paper 18 (USPTO Jan. 12, 2026), designated as informative the same day it was decided, marks the first time a significant change in law has resulted in referral despite settled expectations counseling discretionary denial.
Specifically, Petitioners argued that the Federal Circuit's 2024 decision in LKQ Corp. v. GM Global Tech. Operations LLC 1 had "fundamentally changed the obviousness standard for design patents," and therefore counseled against discretionary denial. Director Squires explained that because the framework under which the challenged patent was examined and issued was abrogated, the merits of the obviousness challenge should be considered, even though the challenged patent was issued 10 years ago.
Although the decision underscores that a change in law can weigh against discretionary denial, its impact may be narrower in practice because the challenged patent was a design patent. Because LKQ reset the governing obviousness standard for designs entirely, the Director found a clear "change in law." That kind of complete doctrinal overhaul is rarer in the utility patent context.
Footnote
1. LKQ Corp. v. GM Global Tech. Operations LLC, 102 F.4th 1280, 1293 (Fed. Cir. 2024)
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