PTAB challenges

Proceedings overview

One active Inter Partes Review (IPR) proceeding, IPR2025-01271, is on file for US patent 10697398. This proceeding is currently in the "Trial Instituted" stage, indicating that a challenge to the patent's claims has been found sufficiently compelling to proceed to a full review. As trial has been instituted, the patent is under active examination for validity at the PTAB.

IPR2025-01271 — Generac Power Systems Inc. et al. v. Champion Power Equipment Inc.

• Type: Inter Partes Review
• Filed: 2025-09-03
• Status: Trial Instituted (The PTAB has decided to initiate a trial to review the patentability of the challenged claims)
• Judge panel: Information not publicly available in search results.
• Petition grounds: Specific claims challenged, prior art references, and statutory bases (§ 102 / § 103) for this particular IPR are not explicitly detailed in the provided search results. However, Generac Power Systems, Inc. (the petitioner) has asserted counterclaims of invalidity against Champion Power Equipment, Inc.'s multi-fuel patents in related district court litigation.
• Institution decision: Instituted. The exact date of institution for IPR2025-01271 is not explicitly stated in the search results, but the proceeding's status indicates that institution occurred. The USPTO Director John Squires has, since October 20, 2025, personally determined whether to institute IPR and PGR proceedings, often issuing summary notices without detailed reasoning, particularly for cases referred for merits consideration after surviving discretionary review.
• Final Written Decision (if issued): Not yet issued. The proceeding is in the "Trial Instituted" stage, with a last modified date of 2026-04-30. A Final Written Decision is typically due within one year of the institution date (35 U.S.C. § 316(a)(11)).
• Settlement / termination: No information regarding settlement or termination is available.
• Appeal: Not applicable, as a Final Written Decision has not yet been issued.
• Defensive value: This active IPR means that the validity of certain claims of US10697398 is currently being challenged at the PTAB. While no claims have been invalidated yet, the institution of trial suggests that Generac has presented a sufficient challenge to at least some claims. A defendant facing assertion of this patent should monitor this proceeding closely, as a successful IPR could lead to cancellation of claims and significantly weaken the patent owner's position.

Strategic summary

Currently, US10697398 has claims under review in one active IPR, IPR2025-01271, filed by Generac Power Systems Inc. et al. As the proceeding is still in the "Trial Instituted" phase, no claims have been canceled or sustained by a Final Written Decision. Therefore, all claims of US10697398 remain untested by a final PTAB decision. It is worth noting that Generac has also been involved in other IPRs against Champion Power Equipment (e.g., IPR2025-00805 and IPR2025-00951), where institution was denied by the Director due to inconsistent claim construction positions taken by Generac in parallel district court litigation. This indicates a persistent effort by Generac to challenge Champion's multi-fuel patents.

Regarding estoppel, since no Final Written Decision has been issued for IPR2025-01271, no estoppel has yet attached under § 315(e)(2). However, if Generac (or a privy) were to receive a Final Written Decision in this IPR, they would be estopped from asserting in other forums any ground that was raised or reasonably could have been raised during the IPR with respect to the claims challenged. For other potential defendants, this IPR proceeding, regardless of its outcome, provides insight into the prior art and invalidity arguments that Generac considers strong.

The pattern of litigation indicates that Champion Power Equipment Inc. is actively asserting its multi-fuel generator patents, including US10697398, against competitors like Generac Power Systems Inc.. Generac's multiple IPR filings, even with some denials on discretionary grounds, signal aggressive defensive maneuvers against Champion's patent portfolio. The PTAB Director's increasing involvement in institution decisions, as seen in the denials for related IPRs IPR2025-00805 and IPR2025-00951, highlights the growing importance of discretionary factors and consistency in claim construction positions when pursuing IPRs.

Recommended next steps

For a defendant facing assertion of US10697398:

• Monitor IPR2025-01271 closely: As the proceeding is "Trial Instituted," it is critical to track its progress. The PTAB has a statutory deadline of one year from institution to issue a Final Written Decision (FWD). Once the institution decision date is known, the FWD due date can be calculated. The outcome of this IPR could significantly impact the strength of US10697398. Review the public docket for IPR2025-01271 on the USPTO PTAB E2E portal for filed documents, including the petition, patent owner response, and institution decision.
• Analyze petition grounds (when available): Understand the specific claims challenged in IPR2025-01271, the prior art asserted, and the statutory grounds (§ 102/§ 103). This will provide insight into the patent's vulnerabilities and the types of invalidity arguments that the PTAB found persuasive enough for institution.
• Consider discretionary denial arguments: Given the Director's recent practice of denying institution based on discretionary factors, particularly "take-and-see" approaches or inconsistent claim construction arguments across forums (as seen in Generac's other IPRs against Champion patents), any new IPR petitions should carefully address these potential pitfalls.
• Evaluate remaining claims: If the IPR results in the cancellation of some claims, focus your defensive strategy on the invalidated claims and consider the implications for any infringement theories based on them. If claims are sustained, it indicates a hardened patent, making future IPR challenges more difficult for those in privity with the petitioner.