Our Patent Case Summaries provide a weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Elong International USA Inc., et al. v. Feit Electric Co., Inc.
No. IPR2025-00258 (PTAB June 25, 2025) (designated precedential on Jan. 9, 2026). Opinion by Stewart.
Petitioners filed a copycat IPR petition and an accompanying motion to join a pending IPR. The Acting Director of the USPTO discretionarily denied institution of the IPR, explaining that “discretionary considerations are first reviewed for the Petition on its own” as if joinder were not sought, “and then reviewed as if joinder were to be granted.” Applying that framework, the Acting Director ruled that absent joinder, the pertinent considerations supported discretionary denial. The Acting Director also found that even if joinder were granted, the facts also favored discretionary denial.
Realtek Semiconductor Corp. v. ParkerVision, Inc.
Nos. IPR2025-00324, -00325 (PTAB June 25, 2025) (designated precedential on Jan. 9, 2026). Opinion by Stewart.
Patent Owner sought discretionary denial of an IPR petition filed after the statutory deadline to file a petition. The petition was a copycat petition and was accompanied by a motion to join a pending IPR proceeding. The Acting Director of the USPTO granted Patent Owner’s request and denied institution, explaining that “petitions filed by time-barred parties should proceed only in exceptional circumstances.” Because Petitioner “d[id] not present an exceptional circumstance,” and based on the “holistic assessment of all the evidence and arguments presented,” the Acting Director discretionarily denied the petition.
LifeVac, LLC v. DCSTAR Inc.
No. IPR2025-00454 (PTAB July 11, 2025) (designated precedential on Jan. 9, 2026). Opinion by Stewart.
Patent Owner sought discretionary denial of an IPR petition where Petitioner had previously challenged the same patent in a PGR. The earlier PGR petition was denied on the merits. The Acting Director of the USPTO denied the request for discretionary denial, ruling that “petitions for inter partes review will generally not be discretionarily denied because of an earlier petition for post-grant review when the post-grant review was not instituted.” The Acting Director also found that “Patent Owner’s argument that the Petitioner is advancing the same or substantially the same prior art or arguments as in [the PGR] is not persuasive.”
Multi-Color Corp. v. Brook & Whittle Ltd.
No. PGR2025-00025 (PTAB July 16, 2025) (designated precedential on Jan. 9, 2026). Opinion by Stewart.
Patent Owner sought discretionary denial of a PGR petition. The Acting Director of the USPTO rejected the request, ruling that “petitions for post-grant review are favored because they must be filed no later than nine months from the grant of the patent (35 U.S.C. § 321(c)), are close in time to examination, and occur before expectations in the patent rights are strongly settled.” She explained that Petitioner provided “persuasive reasoning, supported by evidence,” that discretionary denial was not appropriate, and “the factors counseling against discretionary denial outweigh those that counsel for it.”
Savant Technologies LLC, et al. v. Feit Electric Co., Inc.
No. IPR-2025-00260 (PTAB June 12, 2025) (designated informative on Jan. 9, 2026). Opinion by Stewart.
After Feit Electric filed patent infringement lawsuits in district court, two defendants filed an IPR petition challenging the asserted claims. Subsequently, Feit Electric additionally asserted claims 11 and 12 of the same patent, and in response certain defendants filed a second petition challenging claims 11-14. After the Patent Trial and Appeal Board instituted trial in the first IPR, Feit Electric sought discretionary denial of the second IPR petition.
The Acting Director of the USPTO rejected the request, ruling that the facts did not “demonstrate that the Petition raises concerns of the ‘potential for abuse of the review process by repeated attacks on patents.’” The Acting Director held that Feit Electric’s subsequent assertion of claims 11 and 12 “necessitated the filing of [the second] Petition.” Also, “importantly, the district court proceeding against [one of the defendants/Petitioners] is stayed.” Accordingly, discretionary denial was not appropriate.
Tesla, Inc. v. Intellectual Ventures II LLC
Nos. IPR2025-00217, -00219, -00220, -00221, -00222, -00339 (PTAB June 13, 2025) (designated informative on Jan. 9. 2026). Opinion by Stewart.
Patent Owner sought discretionary denial of six IPR petitions challenging six patents. The Acting Director of the USPTO rejected the request, ruling that “Petitioner’s arguments regarding the complex and diverse [parallel district court] litigation proceeding tip the balance against discretionary denial.” She explained that “the district court proceeding involves eleven patents spanning nine different families that involve a diverse range of subject matter.” “The large number and vast scope of the patents asserted in the district court litigation … weighs against discretionary denial, as the Board is better suited to review a large number of patents involving diverse subject matter.”
Dabico Airport Solutions Inc. v. AXA Power ApS,
No. IPR2025-00408 (PTAB June 18, 2025) (designated informative on Jan. 9. 2026). Opinion by Stewart.
Patent Owner sought discretionary denial of an IPR petition. The Acting Director of the USPTO granted the request because “the considerations favoring discretionary denial outweigh those that counsel against it.” “In particular, the challenged patent has been in force almost eight years, creating settled expectations.” The Acting Director explained that “although there is no bright-line rule on when expectations become settled, in general, the longer the patent has been in force, the more settled expectations should be.” The Acting Director also noted that “patent applications (after 18 months) and issued patents are almost always publicly available to provide notice to the public, other inventors, competitors, and commercial interests. … As such, actual notice of a patent or of possible infringement is not necessary to create settled expectations.”
Padagis US LLC v. Neurelis, Inc.
Nos. IPR2025-00464, -00465, -00466 (PTAB July 16, 2025) (designated informative on Jan. 9. 2026). Opinion by Stewart.
Patent Owner sought discretionary denial of three IPR petitions. The Acting Director of the USPTO granted the request. While the scheduled trial date in the parallel district court proceedings made it unlikely that a final written decision would issue before the district court trial occurs, the Acting Director determined that other factors counsel against discretionary denial. In particular, “the patent examiner’s conclusion” regarding entitlement to a provisional application’s priority date “directly contradicts the Board’s determination [in an earlier proceeding] and raises concerns of material error such that review of the challenged patents is an appropriate use of Office resources.” The Acting Director held that Petitioner “appears to show a material error by the Office, and it is an appropriate use of Office resources to review the potential error.”
Also, the patents challenged in two of the petitions “have not been in force for a significant period of time (issued in 2022 and 2023, respectively), and the patent challenged in [the third petition] is part of the same family, thus raising the same priority issue.” “Accordingly, Patent Owner has not developed strong settled expectations that favor discretionary denial as to the first two patents, and it is an efficient use of Board resources to address the related patent.”
Amgen Inc. v. Bristol-Myers Squibb Co.
Nos. IPR2025-00601, -00602, -00603 (PTAB July 24, 2025) (designated informative on Jan. 9. 2026). Opinion by Stewart.
Patent Owner sought discretionary denial of three IPR petitions. In one of the IPRs, the challenged patent had “not been in force for a significant amount of time (issued in 2022).” The Acting Director of the USPTO explained that “there may be good reasons why a patent owner has strong settled expectations in a patent that has only been in force for three years, for example an explanation of how an extraordinary amount of investment, time, and resources dedicated to research, development, trials, and regulatory approval correlates to settled expectations.” But here, “Patent Owner has not sufficiently articulated such reasons in these proceedings.” Accordingly, the Acting Director found discretionary denial inappropriate for this IPR.
As to the other two challenged patents, the Acting Director noted that the patents “have been in force for seven and six years, respectively, creating strong settled expectations for Patent Owner.” Accordingly, the Acting Director granted discretionary denial for those two IPRs.
Home Depot U.S.A., Inc. v. H2 Intellect LLC
No. IPR2025-00480 (PTAB Sept. 4, 2025) (designated informative on Jan. 9. 2026). Opinion by Stewart.
Patent Owner sought discretionary denial of an IPR petition. The Acting Director of the USPTO ruled that “some considerations favor exercising discretion to deny institution,” including that the challenged patent had been in force for over twelve years, “creating strong settled expectations for Patent Owner.”
Discretionary denial, however, was not appropriate. “Petitioner argues with respect to settled expectations that the challenged patent has not been commercialized, asserted, marked, licensed, or otherwise applied in its technology space.” “Petitioner argues that Patent Owner only previously targeted smartphones, tablets, and watches, whereas Petitioner, Home Depot, is the proprietor of a chain of hardware stores and did not have reason to anticipate assertion of the patent against it.” The Acting Director found Petitioner’s arguments persuasive and denied Patent Owner’s request for discretionary denial.
Apple Inc. v. Ferid Allani
Nos. IPR2025-00856, -00857 (PTAB Sept. 5, 2025) (designated informative on Jan. 9. 2026). Opinion by Stewart.
Patent Owner sought discretionary denial of two IPR petitions challenging two patents. The Acting Director of the USPTO rejected the request. While some factors weighed in favor of discretionary denial, such as the likelihood of a trial before a final written decision, the parties’ meaningful investment in the parallel proceedings, and Patent Owner’s “strong settled expectations” for one of the patents, which had been in force for thirteen years, other factors counseled against discretionary denial.
As Petitioner explained, it did not expect enforcement of one of the patents “because it concluded that it did not require a license to the patent and advised Patent Owner of its position, and because Patent Owner did not assert the challenged patent against Petitioner until eleven years after the parties’ discussion about that patent.” Also, “Patent Owner did not assert the challenged patents against Petitioner until after they expired.” The Acting Director ruled that “under these circumstances, discretionary denial is not appropriate.”
Sun Pharmaceuticals Industries, Inc. v. Nivagen Pharmaceuticals, Inc.
No. IPR2025-00893 (PTAB Sept. 19, 2025) (designated informative on Jan. 9. 2026). Opinion by Stewart.
Patent Owner requested discretionary denial of an IPR petition. The Acting Director of the USPTO agreed that discretionary denial is appropriate under the circumstances. Although “some considerations weigh[ed] against discretionary denial,” including the likelihood of a final written decision before a district court trial occurs, other factors favored discretionary denial. In particular, the Acting Director explained that “Petitioner has taken different claim construction positions in this proceeding and the parallel district court proceeding.” She explained that “although a party is not necessarily precluded from arguing different claim construction positions before a district court and the Board, a party should explain why different positions are warranted,” and here the Petitioner did “not sufficiently explain why it advanced a narrow construction in district court and advances a broader construction in its Petition.” The Acting Director concluded that “the considerations favoring denial, therefore, outweigh the considerations that counsel against it.”
Alliance Laundry Systems, LLC v. PayRange LLC
No. IPR2025-00950 (PTAB Sept. 19, 2025) (designated informative on Jan. 9. 2026). Opinion by Stewart.
Patent Owner filed a request for discretionary denial of an IPR petition. The Acting Director of the USPTO agreed that discretionary denial is appropriate under the circumstances. For example, the petition was “the third petition involving the challenged patent” and “both of the prior petitions were denied based on the merits.” Petitioner stated that it relied on the same primary reference as the prior IPRs while addressing and curing any deficiencies by relying on additional references. The Acting Director ruled that “Petitioner’s admission raises concerns of road mapping and weighs in favor of discretionary denial.” Also, “Patent Owner present[ed] evidence that it has licensed the challenged patent, which creates some settled expectations favoring Patent Owner.”