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The Patent Trial and Appeal Board (PTAB) recently designated a post-grant review (PGR) decision as precedential. In the decision, the Director issued a discretionary denial decision confirming that the proper analysis was a "totality of the circumstances" type analysis, taking into account all facts and arguments presented by the parties.
Despite the existence of co-pending litigation and a scheduled trial set to occur before a final written decision would issue, the PTAB decided not to discretionarily deny the PGR and instead:
"referred to the Board to handle the case in the normal course, including by issuing a decision on institution addressing the merits and other non-discretionary considerations, as appropriate."
In doing so, the Director determined that:
"[p]etitions 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."
The designation of this decision as precedential shows a renewed commitment to encouraging practitioners to prepare and file PGR petitions. Given the narrow window during which PGRs are available (9 months from the issuance of patents), this encourages those in industry to police the competitor landscape and promptly act against patents that warrant challenging. This is consistent with the PTAB's recent decisions finding that settled expectations of the parties should be accounted for when determining whether or not to institute IPR trials. See e.g., Dabico Airport Solutions Inc. v. AXA Powers APS, No. IPR2025-00408, Paper 21 (P.T.A.B. June 18, 2025).
Those in industry should maintain vigilance regarding competitor's patent portfolios and discuss the applicability of PGRs patent defense strategy.
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