This Post Grant Pulse provides updates on recent institution statistics, what to look out for in key discretionary factors, and other strategies to consider.
Recent Institution Statistics
Between November 20 and December 18, 2025, a total of 97 petitions were denied based on discretionary factors, and 87 petitions were deferred for merits consideration. Of those considered on the merits, 13 were instituted and 3 were denied.
Key Discretionary Factors & What to Look For
- Examiner error: Look for prior art considered by the Examiner during prosecution that teaches the allowable feature and look for any related applications in which the Examiner rejected similar claims. Consider whether the Examiner’s search history indicates the Examiner searched the proper databases with the appropriate terms.
- PTAB efficiency: Look for other IPRs/PGRs where the PTAB addressed related patents or similar claims. Check whether the patent is asserted in multiple different venues.
- Patent Owner expectation: Check whether similar claims in US and foreign patent families were rejected or found invalid. Consider the Patent Owner’s treatment of the patent, such as failure to pay maintenance fees or failure to assert until expired.
Other Strategies & What to Consider
- Join another IPR/PGR: Consider monitoring for IPR/PGR petitions on any patents of interest. Consider filing an identical petition and joinder motion without waiting for institution decision.
- Challenge unasserted patents: Consider whether plaintiff’s patent portfolio includes patents that issued less than 6 years ago. Filing an IPR petition on those patents could help create leverage in litigation.
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