IP Law Daily, PATENT NEWS—P.T.A.B.: USPTO designates as precedential four Director decisions; nine others deemed informative, (Jan 12, 2026)

By Saurabh Kashyap, B.A., M.A., LL.B., LL.M.

USPTO continues to shape a more structured framework for the use of discretionary authority under the AIA trial regime.

On January 9, 2026, the U.S. Patent and Trademark Office (USPTO) designated four Director-level decisions involving discretionary denials of inter partes review (IPR) and post-grant review (PGR) as precedential, and nine others as informative, marking a significant clarification in the agency’s treatment of petitions implicating timing, duplication, and parallel litigation considerations under 35 U.S.C. §§ 314(a) and 315(b). The designated decisions address the scope of the Director’s authority to deny institution of trial proceedings for policy-based reasons—even where statutory institution thresholds may otherwise be met. The move reinforces the USPTO’s commitment to consistency, transparency, and predictability in the application of discretionary factors.

Precedential decisions. The USPTO designated the following four Director decisions as precedential, establishing binding authority on the application of discretionary denial under §§ 314(a) and 315(b) in the context of duplicative petitions, time-barred joinder, and parallel litigation:

• LifeVac LLC v. DCSTAR Inc., IPR2025-00454, Paper 11. The Director declined to deny institution under § 314(a), despite the petitioner’s prior unsuccessful PGR on the same patent. Rejecting the patent owner's argument under § 325(d), the Director held that a previous PGR denial—without a final written decision—does not automatically preclude a subsequent IPR. The decision confirms that statutory provisions contemplate both avenues of review and that prior unsuccessful petitions do not necessarily trigger a discretionary denial.

• Multi-Color Corporation v. Brook & Whittle Ltd., PGR2025-00025, Paper 10. This decision reinforces the USPTO’s favorable posture toward post-grant reviews. Despite a parallel district court trial being scheduled before the projected PTAB final decision, the Director declined discretionary denial, citing the petitioner’s lack of involvement in the litigation and the early statutory window for PGRs. The ruling confirms that post-grant review remains a preferred mechanism for early-stage patent correction.

• Realtek Semiconductor Corp. v. ParkerVision, Inc., IPR2025-00324, Paper 11. The Director exercised discretion to deny institution where Realtek, a time-barred party under § 315(b), filed duplicative petitions and sought joinder. The decision held that joinder by time-barred petitioners should be granted only in exceptional circumstances, which were absent here. The ruling underscores that procedural fairness and statutory integrity outweigh attempts to circumvent filing deadlines through strategic coordination.

• Elong International USA Inc. v. Feit Electric Co., Inc., IPR2025-00258, Paper 16. In a case involving a follow-on petition and motion for joinder, the Director exercised discretion to deny institution under § 314(a), citing inefficiency and duplication. The petition mirrored an existing IPR and was filed against the backdrop of advanced district court proceedings. The Director emphasized that, even if joinder were granted, the petition would fail on discretionary grounds when assessed independently. The decision reiterates that joinder requests do not insulate copycat petitions from scrutiny under the NHK-Fintiv framework.

Informative decisions. The USPTO also designated the following nine Director decisions as informative, providing further guidance on discretionary considerations in IPR and PGR institution decisions:

• Savant Techs. LLC v. Feit Electric Co., Inc., IPR2025-00260, Paper 16 (Dir. June 12, 2025).

• Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00217, Paper 9 (Dir. June 13, 2025).

• Dabico Airport Solutions Inc. v. AXA Power ApS, IPR2025-00408, Paper 21 (Dir. June 18, 2025).

• Padagis US LLC v. Neurelis, Inc., IPR2025-00464, Paper 12 (Dir. July 16, 2025).

• Amgen Inc. v. Bristol-Myers Squibb Co., IPR2025-00601, Paper 9 (Dir. July 24, 2025).

• Home Depot U.S.A., Inc. v. H2 Intellect LLC, IPR2025-00480, Paper 11 (Dir. Sept. 4, 2025).

• Apple Inc. v. Ferid Allani, IPR2025-00856, Paper 11 (Dir. Sept. 5, 2025).

• Sun Pharmaceutical Industries, Inc. v. Nivagen Pharmaceuticals, Inc., IPR2025-00893, Paper 18 (Dir. Sept. 19, 2025).

• Alliance Laundry Systems, LLC v. PayRange LLC, IPR2025-00950, Paper 11 (Dir. Sept. 19, 2025).

These informative rulings elaborate on factual scenarios in which the Director either exercised or declined discretionary denial. They involve factors such as patent age and “settled expectations,” conflicting claim constructions across forums, prior serial petition filings, and the PTAB's institutional competence in complex validity disputes. While not binding, these decisions will serve as persuasive guidance for future parties and adjudicators alike. The newly precedential decisions now serve as binding guidance for PTAB panels, Director Reviews, and stakeholders, while the informative designations highlight the nuanced factual calculus that drives institution outcomes.

USPTO Designation of Decisions as Precedential and Informative, January 9, 2026.

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