PTAB Precedential Designations Highlight Discretionary Considerations on PGR Petitions, Joinder Requests

USPTO

On Friday, the U.S. Patent and Trademark Office designated a series of decisions on discretionary denial requests as either precedential or informative, highlighting considerations important for both inter partes review (IPR) and post-grant review (PGR) proceedings. In particular, precedential designations underscored the favored status of patent validity challenges through PGR petitions, and clarified important timing factors when determining whether to grant petitioner requests for joinder.

Discretionary denials of PTAB trials have been a focal point for the USPTO under the Trump Administration since last March, when then-USPTO Acting Director Coke Morgan Stewart established a new workload management framework at the PTAB under which she personally decided requests for discretionary denials of IPR and PGR petitions. Last summer, remarks made by Acting Director Stewart at the Intellectual Property Business Congress (IPBC) Global established the USPTO’s clear preference for PGR petitions, which must be filed within nine months of the patent’s issue date.

Timing considerations have emerged as a major factor for PTAB discretionary denial decisions into the early tenure of USPTO Director John Squires. Before Director Squires was confirmed by the U.S. Senate, a patent owner’s settled expectations, which could be established as early as six years after the patent’s issue date, was cited in a string of PTAB discretionary denial rulings as a significant factor favoring denial. Settled expectations of petitioners have also been cited, albeit in far fewer cases, when patents have been in force for a decade but only commercialized or asserted in industry sectors in which the petitioner does not operate.

The four PTAB decisions designated as precedential, each issued during Stewart’s time as Acting Director, are split evenly in terms of whether denial was granted, but provide further contours on PGR petitions and joinder requests before the PTAB.

LifeVac, LLC v. DCSTAR Inc. (July 2025)

Patent Owner DCSTAR asked the USPTO to deny LifeVac’s IPR petition challenging the validity of patent claims covering a device for removing obstructions from respiratory tracts. DCSTAR noted that LifeVac had previously challenged the patent in a PGR petition, but that petition did not result in a final written decision on the merits. Acting Director Stewart ruled that discretionary denial of institution in this case should be denied, reasoning that PGRs are favored “and occur before expectations in the patent rights are strongly settled.” Because of this, IPR petitions generally will not be denied because of earlier PGR petitions challenging the same patent when a PGR trial was not instituted.

Multi-Color Corp. v. Brook & Whittle Ltd. (July 2025)

Brook & Whittle, owner of patent claims to a recyclable heat shrink film for recyclable containers, requested discretionary denial of Multi-Color’s PGR petition based on several persuasive considerations. Among those weighing in favor of discretionary denial included two actions in U.S. district court, including a patent infringement suit in Eastern Texas and a declaratory judgment action in New Jersey, both of which involved the challenged patent. In particular, the Eastern Texas trial date was scheduled to conclude four months before a final written decision would be due from the PTAB.

However, Brook & Whittle’s request for discretionary denial of Multi-Color’s PGR was denied by Stewart, who noted that Multi-Color was not a party to either the Eastern Texas or New Jersey lawsuits. The ruling also reiterated the favored status of PGR petitions because they are filed close in time to examination and before expectations are settled.

Realtek Semiconductor Corp. v. ParkerVision, Inc. (June 2025)

Fairness and equity considerations in the face of Realtek’s untimely request to join instituted IPR proceedings led Stewart to grant discretionary denial in this case. ParkerVision sued Realtek asserting patent claims directed to energy transfer systems in September 2023, and Realtek filed its IPR petition in December 2024. While Realtek’s petition was a copycat of an already instituted IPR petition filed by Texas Instruments within the one-year time bar under 35 U.S.C. § 315(b), “[p]etitions filed by time-barred parties should proceed only in exceptional circumstances,” which weren’t presented by Realtek.

Elong International USA Inc. v. Feit Electric Co., Inc. (June 2025)

Timing considerations based on parallel infringement proceedings in U.S. district court led Stewart to grant a request for discretionary denial filed by patent owner Feit Electric. First reviewing discretionary considerations based on Elong’s IPR petition alone absent joinder, Stewart noted that a final written decision wouldn’t issue until six months after a scheduled January 2026 trial date on Feit Electric’s patent claims to improved LED lighting apparati. Even with joinder, a final written decision would not be due by the PTAB until March 2026. Though Elong argued that its IPR petition was identical to the instituted petition it sought to join, Stewart countered that the USPTO would have to maintain a proceeding it would not have instituted in the event that the first petitioner settles or withdraws from the IPR proceedings.

The nine PTAB decisions designated as informative, which set forth factual circumstances supporting or weighing against discretionary denial, include:

• Savant Technologies LLC v. Feit Electric Co. (June 2025)
• Tesla, Inc. v. Intellectual Ventures II LLC (June 2025)
• Dabico Airport Solutions Inc. v. AXA Power ApS (June 2025)
• Padagis US LLC v. Neurelis, Inc. (July 2025)
• Amgen Inc. v. Bristol-Myers Squibb Co. (July 2025)
• Home Depot U.S.A., Inc. v. H2 Intellect LLC (September 2025)
• Apple Inc. v. Ferid Allani (September 2025)
• Sun Pharmaceuticals Industries, Inc. v. Nivagen Pharmaceuticals, Inc. (September 2025)
• Alliance Laundry Systems, LLC v. PayRange LLC (September 2025)