ESF Post Grant Update

There has been a significant recent development pertinent to anyone who is regularly involved or may become involved in proceedings before the Patent Trial and Appeal Board (“Board”). Specifically, on February 28, 2025, Acting Director of the U.S. Patent and Trademark Office (PTO), Coke Stewart, rescinded the PTO’s Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Interim Procedure”).  The Interim Procedure essentially prevented the Board from denying institution of an inter partes review (“IPR”) or post grant review (“PGR”) due to a co-pending litigation between the parties that would resolve the same issues in a more timely manner.  By rescinding the Interim Procedure, Acting Director Stewart has reopened the door for patent owners to successfully avoid IPR/PGR institution on certain procedural grounds.

With the Interim Procedure rescinded, patent owners should:

• Strongly consider arguing for procedural denials in Patent Owner Preliminary Responses (“POPRs”) where there is a co-pending litigation;
• Consider requesting additional briefing to address the recission of the Interim Procedure in pre-institution cases where the POPR has already been filed;
• Expect to see IPRs/PGRs filed earlier in the litigation timeline, especially in the coming months when there will be uncertainty regarding how the Board will address procedural denials; and
• Include IPR/PGR procedural denials as a factor in selecting the appropriate jurisdiction for filing an infringement suit.

Petitioners should:

• Look to file IPRs/PGRs as soon as possible after a patent owner files suit, especially in the coming months when it will be unclear how the Board will be addressing procedural denials;
• In anticipation of the patent owner raising procedural bases for denial, vigorously argue against procedural denial in the IPR/PGR petition;
• Consider including issues in an IPR/PGR petition that will not be addressed in a co-pending litigation, such as challenging unasserted claims; and
• Consider pre-emptively challenging problematic patents prior to the patent owner filing suit.

ESF has had considerable success helping patent owner receive, and petitioners avoid, procedural denials from Board.  For additional guidance regarding your specific situation, please reach out to any members of ESF’s litigation and post issuance practice groups.