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USPTO elevates precedential and informative decisions on discretionary institution in IPR/PGR

The United States Patent and Trademark Office (USPTO) designated four decisions as precedential and nine decisions as informative, all highlighting the factors the USPTO will consider in determining whether to deny a petition for inter partes review (IPR) or post-grant review (PGR) based on discretionary considerations.

Although the individual outcomes differ among the four precedential decisions (two granting institution and two denying), the decisions provide insight on how the USPTO will exercise its discretion to institute and deny America Invents Act (AIA) trials based on timing, copycat petitions and joinder, sequential petitions, and policy preference for PGR availability. The USPTO designated the following decisions precedential:

LifeVac LLC v. DCSTAR Inc., IPR2025-00454, Paper 11 (Director July 11, 2025). The Director declined to exercise discretion to deny institution, holding that the petitioner’s earlier unsuccessful PGR petition did not weigh against institution of a later-filed IPR.
Multi-Color Corporation v. Brook & Whittle Ltd., PGR2025-00025, Paper 10 (Director July 16, 2025). The Director declined to exercise discretion to deny institution, emphasizing the USPTO’s policy favoring PGR review where eligibility requirements are met.
Realtek Semiconductor Corp. v. ParkerVision, Inc., IPR2025-00324, Paper 11 (Director June 25, 2025). The Director exercised discretion to deny institution, explaining that petitions filed by time-barred parties should proceed only in exceptional circumstances.
Elong International USA Inc. v. Feit Electric Company, Inc., IPR2025-00258, Paper 16 (Director June 25, 2025). The Director exercised discretion to deny institution of a copycat petition accompanied by a joinder request, reasoning that the petition must independently satisfy institution standards, and only after that threshold is met should joinder considerations be evaluated.

The USPTO designated the following decisions as informative, illustrating the types of factual scenarios that may support either discretionary denial of a petition or, conversely, a decision to consider the petition on the merits.

Savant Techs. LLC d/b/a GE Lighting v. Feit Electric Co., Inc., IPR2025-00260, Paper 16 (Director June 12, 2025).
Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00217, Paper 9 (Director June 13, 2025).
Dabico Airport Solutions Inc. v. AXA Power ApS, IPR2025-00408, Paper 21 (Director June 18, 2025).
Padagis US LLC v. Neurelis, Inc., IPR2025-00464, Paper 12 (Director July 16, 2025).
Amgen Inc. v. Bristol-Myers Squibb Co., IPR2025-00601, Paper 9 (Director July 24, 2025).
Home Depot U.S.A., Inc. v. H2 Intellect LLC, IPR2025-00480, Paper 11 (Director Sept. 4, 2025).
Ferid Allani, IPR2025-00856, Paper 11 (Director Sept. 5, 2025).
Sun Pharmaceutical Industries, Inc. v. Nivagen Pharmaceuticals, Inc., IPR2025-00893, Paper 18 (Director Sept. 19, 2025).
Alliance Laundry Systems, LLC v. PayRange LLC, IPR2025-00950, Paper 11 (Director Sept. 19, 2025).

Together, these informative decisions provide concrete, real‑world examples of how the Director is likely to applies discretion under 35 USC §§ 314(a) and 324(a), ranging from circumstances where institution is disfavored (e.g., parallel litigation dynamics, petition quality, procedural posture) to situations where the USPTO [...]

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Designated Informative: PTO Director Declines IPR Institution Following District Court § 101 Invalidation

The US Patent & Trademark Office (PTO) designated a recent Director Review decision as informative, signaling its significance for future proceedings. The decision emphasizes that a final district court ruling invalidating a patent weighs heavily against instituting inter partes review (IPR) under the Fintiv framework, reinforcing the agency’s stance on minimizing duplicative litigation. Hulu LLC v. Piranha Media Distribution LLC, IPR2024-01252; -01253 (PTAB Director Review Apr. 17, 2025) (Stewart, PTO Dir.)

Piranha requested Director Review of the Patent Trial & Appeal Board’s decision granting institution of two IPRs filed by Hulu. Piranha argued that the decision should be reversed and the IPRs denied institution, citing a district court final judgment invalidating the challenged claims under 35 U.S.C. § 101 issued before the institution decision was made. Hulu argued that Director Review was unwarranted.

In the district court litigation, Piranha asserted that Hulu infringed claims from two patents related to integration of advertising content into digital media streams. Hulu moved to dismiss the complaint, arguing that the asserted patents were ineligible for patenting under § 101. The district court determined that the asserted claims were directed to the abstract idea of “displaying an advertisement in exchange for access to copyrighted material, as well as the abstract idea of receiving, organizing, and displaying data,” and contained no inventive concept. The district court granted Hulu’s motion to dismiss and held the claims patent ineligible and therefore invalid under § 101.

The Director explained that since a district court had already ruled the patent claims invalid, launching separate IPRs to assess their patentability on other grounds was unnecessary. The Director noted that if the Federal Circuit overturned the district court’s decision, Hulu could still pursue its invalidity arguments during remand proceedings. Declining to institute review was the more efficient and practical path under the circumstances, the Director said.

While the Board applied the Fintiv framework in its institution decision, the Director observed that the framework does not align neatly with the facts of this case, where a final district court judgment under § 101 preceded the Board’s decision. The Director ultimately concluded that a second review proceeding was unwarranted given the claims’ current invalid status.

USPTO elevates precedential and informative decisions on discretionary institution in IPR/PGR

Designated Informative: PTO Director Declines IPR Institution Following District Court § 101 Invalidation

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