On January 9, 2026, the USPTO designated four decisions as precedential and nine decisions as informative. And soon after, on January 12, 2026, the USPTO designated one more decision as precedential and another as informative. All 15 decisions relate to whether or not the Director will deny institution of an inter partes review (IPR) or post-grant review (PGR) based on discretionary considerations.[1]
It is important to understand what the designated decisions say. This is especially true in view of the Director’s policy announcement on October 17, 2025, that he will handle all decisions on institution, primarily through summary notices that provide no information. The designation of 15 decisions now helps elucidate for the public what the Director may consider when addressing discretionary considerations.
As a reminder, precedential decisions are binding authority at the PTAB, and at the USPTO at large, as applicable. While not necessarily binding per se, informative decisions provide information and guidance about Board norms, for example, on recurring issues in cases, issues of first impression, and Board rules and practices.
All 15 decisions address discretionary denial considerations at the institution stage in AIA proceedings. It is notable that the Director made a point of designating both decisions that deny institution based on discretionary considerations and decisions that “refer” a petition for consideration of institution on the merits.
Below are summaries of the newly designated decisions—most issued by the Acting Director in 2025, and two issued by the Director in January 2026:
Five precedential decisions
These decisions address “copycat” petitions filed with motions to join an on-going trial; an IPR petition filed after a PGR petition was previously denied on the merits; the general idea of favoring PGRs; and multiple petitions challenging the same claims on multiple grounds based on different possible priority dates.
- Elong International USA Inc. v. Feit Electric Company, Inc., IPR2025-00258, Paper 16 (June 25, 2025) (discretionarily denying institution where a petitioner filed a copycat petition and motion to join an on-going instituted IPR, determining it unlikely that a final written decision would issue before a district court trial would occur, stating that parallel trial considerations for a copycat petition first should be considered absent joiner, e.g., whether an IPR trial would conclude later, as if joinder did not occur)
- Realtek Semiconductor Corp. v. ParkerVision, Inc., IPR2025-00324, etc., Paper 11 (June 25, 2025) (discretionarily denying institution, stating that copycat petitions and motions for joinder filed by petitioners who are time-barred under 35 U.S.C. § 315(b) should proceed only in “exceptional circumstances”)
- LifeVac LLC v. DCSTAR Inc., IPR2025-00454, Paper 11 (July 11, 2025) (referring an IPR petition for consideration of institution on merits, stating PGR petitions “are favored” and IPR petitions “will generally not be discretionarily denied because an earlier” PGR petition was denied institution on the merits)
- Multi-Color Corporation v. Brook & Whittle Ltd., PGR2025-00025, Paper 10 (July 16, 2025) (referring a PGR petition for consideration of institution on merits, again noting that PGR petitions “are favored”)
- PacifiCorp v. Birchtech Corp., IPR2025-00687, etc., Paper 40 (Jan. 12, 2026) (vacating and remanding institution decisions on Director Review addressing challenges of the same claims in two parallel petitions per patent based two different potential priority dates, stating because “Petitioners had ample room in each petition” to challenge the claims, “this was not a ‘rare’ circumstance justifying the filing of multiple petitions against each patent” and “absent exceptional circumstances, in a case where there is a dispute over priority date, the Board should either resolve the priority date issue or institute, at most, the first-ranked petition”)
Ten informative decisions
These decisions address the impact of a patent owner’s subsequent action in district court; the complexity of multiple patents and subject matter at issue; settled expectations by both parties (e.g., how long a patent has been in force); likely material error by the Office during examination; a petitioner offering different claim constructions at the Board and in district court; and a substantive change in applicable law post-issuance.
On the topic of a petitioner offering differing claim constructions, see also below four other decisions previously designated precedential or informative in 2025:
- Savant Techs. LLC d/b/a GE Lighting v. Feit Electric Co., Inc., IPR2025-00260, Paper 16 (June 12, 2025) (referring a serial IPR petition for consideration of institution on merits where petitioner established that patent owner’s subsequent action in district court challenging other claims of the patent necessitated the filing of a second petition by petitioner)
- Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00217, etc., Paper 9 (June 13, 2025) (referring IPR petitions for consideration of institution on merits because 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, IPR2025-00408, Paper 21 (June 18, 2025) (discretionarily denying institution in relation to a patent “in force almost eight years, creating settled expectations,” explaining petitioner did not provide persuasive reasons as to why an IPR was “an appropriate use of Office resources” here, also noting that “actual notice of a patent or of possible infringement is not necessary to create settled expectations”)
- Padagis US LLC v. Neurelis, Inc., IPR2025-00464, etc., Paper 12 (July 16, 2025) (referring IPR petitions for consideration of institution on merits because petitioner appeared to show material error during examination where an examiner found priority to an application despite earlier Board decisions reaching a contrary conclusion, also noting the patents issued in 2022 and 2023, less than 4 years prior)
- Amgen Inc. v. Bristol-Myers Squibb Co., IPR2025-00601, etc., Paper 9 (July 24, 2025) (noting example reasons why a patent owner may have settled expectations in a patent that has not long been in force, including “how an extraordinary amount of investment, time, and resources dedicated to research, development, trials, and regulatory approval correlates to settled expectations,” but referring the case for one patent in force for three years because patent owner did not sufficiently articulate such information; discretionarily denying institution in relation to two patents in force for six and seven years)
- Home Depot U.S.A., Inc. v. H2 Intellect LLC, IPR2025-00480, Paper 11 (Sept. 4, 2025) (referring an IPR petition for consideration of institution on merits because the challenged patent had not been “commercialized, asserted, marked, licensed, or otherwise applied in its technology space,” and petitioner (hardware store) had no reason to expect assertion of the patent based on patent owner’s previous targeting of smartphones, tablets, and watches; referred despite final written decision unlikely to be prior to district court trial date)
- Apple Inc. v. Ferid Allani, IPR2025-00856, etc., Paper 11 (Sept. 5, 2025) (referring IPR petitions for consideration of institution on merits because, “[Petitioner] 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,” and “Patent Owner did not assert the challenged patents against Petitioner until after they expired”)
- Sun Pharm. Industries, Inc. v. Nivagen Pharms., Inc., IPR2025-00893, Paper 18 (Sept. 19, 2025) (discretionarily denying institution noting the patent was not in force for a significant period of time and there was no district court trial date, but denying because petitioner did not sufficiently explain why it offered different, narrower claim construction in district court versus in its petition)
On the topic of a petitioner offering differing claim constructions, see also below four other decisions previously designated precedential or informative in 2025:
- Revvo Technologies, Inc. v. Cerebrum Sensor Technologies, Inc., IPR2025-00632, Paper 20 (designated Nov. 3, 2025) (vacating and remanding institution decision on Director Review) (precedential)
- Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00340, Paper 18 (designated Nov. 5, 2025) (vacating institution decision on Director Review) (informative)
- CrowdStrike, Inc. v. GoSecure, Inc., IPR2025-00068, etc., Paper 25 (June 25, 2025) (designated June 26, 2025) (vacating and remanding institution decision on Director Review) (informative)
- Cambridge Mobile Telematics, Inc. v. Sfara, Inc.(majority opinion), IPR2024-00952, Paper 12 (Dec. 13, 2024) (designated Mar. 20, 2025) (denying institution) (informative)
- Alliance Laundry Systems, LLC v. PayRange LLC, IPR2025-00950, Paper 11 (Sept. 19, 2025) (discretionarily denying institution, notwithstanding a stayed district court litigation and the four-year age of the patent, because patent owner licensed the patent, creating some settled expectations, and two prior petitions by different parties were denied on the merits, creating road mapping concerns)
- Top Glory Trading Group Inc. v. Cole Haan LLC, IPR2025-01395, etc., Paper 18 (Jan. 12, 2026) (referring IPR petitions for consideration of institution on merits (Paper 17) and denying a request for discretionary denial (Paper 18), despite any settled expectations of patent owner, in view of a substantive change in law relating to the obviousness standard for design patents in LKQ Corp. v. GM Global Tech. Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024) that occurred after the patent issued)
The current institution rate overall since March 26, 2025, stands at between 30% to 40%. Thus, challenging and defending patent claims in PGR and IPR proceedings are still viable and occur today.
The key for all stakeholders is to understand how these proceedings work, including the current nuances of discretionary denial considerations for both parties, and to keep an eye on any additional changes that may take place in 2026. In addition to AIA proceedings, ex parte reexamination is also an important consideration for all parties. Sterne Kessler has deep experience in these areas of practice and stands ready to help as needed.
[1] The designations occurred after what appeared to be previous designations (without a public press release) of the same 13 decisions designated on January 9, 2026, plus one more, on December 18, 2025. On that day, 14 decisions were added to PTAB’s Precedential and informative decisions webpage, but then taken down shortly thereafter. The USPTO has not indicated why it added and removed decisions last month, or why one of those decisions (Tessell, Inc. v. Nutanix, Inc., IPR2025-00322, Paper 14 (June 12, 2025)), applying assigner estoppel as “unfair dealings” to discretionarily deny institution, is not designated now.
