In a recent decision, Acting Director Coke Morgan Stewart denied a Patent Owner's request for discretionary denial in LifeVac, LLC v. DCSTAR, Inc., IPR2025-00454. Even though Petitioner had previously challenged the same patent in a post-grant review, the Acting Director determined that the denial of the prior post-grant review did not justify discretionary denial of the present IPR.
On January 21, 2025, LifeVac, LLC ("Petitioner") filed a petition requesting an inter partes review of U.S. Patent No. 11,478,575 ("the '575 Patent") directed to a breathing apparatus. On April 25, 2025, DCSTAR Inc. ("Patent Owner") filed a request for discretionary denial arguing that the IPR should be discretionarily denied because Petitioner had previously challenged the '575 Patent in a post-grant review that was denied on the merits. Petitioner's post-grant review challenge, however, did not result in a final written decision.
In an order denying Patent Owner's request for discretionary denial, the Acting Director emphasized that IPRs "will generally not be discretionarily denied because of an earlier petition for post-grant review when the post-grant review was not instituted." IPR2025-00454 at Paper 11. The decision reasoned that petitions for post-grant review are typically favored because they are filed close in time to examination and before expectations in patent rights are strongly settled. Thus, a prior post-grant review that was not instituted and did not result in a final written decision does not justify discretionary denial of the subsequent IPR.
Moreover, the decision found that the IPR's arguments and prior art references were not the same as those in the post-grant review, thus there was no compelling justification to deny institution under 35 U.S.C. § 325(d). As a result, Patent Owner's request for discretionary denial was denied and the petition was referred to the Board for a decision on institution addressing the merits.
Takeaway: Parties should recognize that during a subsequent challenge of the same patent, discretionary denial of an IPR is generally less likely when a prior challenge of the same patent in a post grant review was declined institution.
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