PTAB challenges

Proceedings overview

There has been one AIA trial proceeding filed against US patent 11627242. This proceeding resulted in a discretionary denial of institution, meaning the claims of the patent have not been substantively reviewed or invalidated by the Patent Trial and Appeal Board (PTAB). This outcome gives a defendant a stronger defensive posture in terms of PTAB challenges, as the patent has survived an initial IPR challenge based on procedural grounds rather than a lack of merit, and the claims remain unchallenged.

IPR2026-00141 — Bird Buddy, Inc. v. Frederick Perkins

• Type: Inter Partes Review
• Filed: 2025-11-21
• Status: Discretionary Denial. This means the petition for inter partes review was denied institution by the Director of the USPTO, and the trial did not proceed to a merits review.
• Judge panel: The institution decision was rendered by the Director of the USPTO, John A. Squires. Decisions on institution, especially discretionary denials, have been centralized under the Director's authority since October 2025.
• Petition grounds: While specific claims are not explicitly detailed in the public summaries of the denial, the petition likely challenged claims of US11627242 under 35 U.S.C. § 102 (anticipation) and § 103 (obviousness). The petitioner, Bird Buddy, Inc., was also a defendant in a parallel district court litigation (1:24-cv-01236) where Frederick Perkins (the patent owner) asserted the patent, including at least claim 1.
• Institution decision: Denied on May 14, 2026, as a discretionary denial. The Director's decision was designated as precedential and emphasized that AIA proceedings are intended as alternatives to district court litigation, not as parallel or subsequent forums for challenging patentability. The reasoning for the denial was that the petitioner had a prior opportunity to litigate the patent's validity in district court, where the petitioner's invalidity expert testimony on anticipation and obviousness was excluded due to a failure to disclose the claim construction upon which the opinions were based. The Director viewed the IPR petition as an attempt to "relitigate" issues that could have been fully and fairly litigated in district court, effectively seeking a "second bite at the apple," which was deemed to contravene the legislative intent for AIA proceedings and the public interest.
• Final Written Decision: Not applicable, as institution was denied.
• Settlement / termination: The proceeding was terminated via the Director's discretionary denial of institution.
• Appeal: No appeal to the Federal Circuit regarding the denial of institution, as such decisions are generally unreviewable.
• Defensive value: This discretionary denial significantly strengthens the patent owner's position. It signals that the PTAB, under current Director policy, is disinclined to institute IPRs when a petitioner has had a prior opportunity to challenge validity in district court litigation, particularly if the petitioner's prior efforts were hampered by their own actions. For any entity facing assertion of this patent today, it indicates that an IPR challenge from a party with similar litigation history would face a high bar for institution under the "second bite at the apple" doctrine and the broader discretionary denial framework. The claims of US11627242 remain unadjudicated on their merits by the PTAB.

Strategic summary

All claims of US11627242 remain UNTESTED by the PTAB due to the discretionary denial of institution for IPR2026-00141. No claims have been canceled or sustained by a PTAB merits decision.

The estoppel landscape for this patent is primarily shaped by the discretionary denial. While 35 U.S.C. § 315(e)(2) estoppel, which bars petitioners (and their privies) from raising any ground they raised or reasonably could have raised, typically applies after a final written decision, the Director's discretionary denial in IPR2026-00141 acts as a strong disincentive for Bird Buddy, Inc. (and potentially its privies) to file future IPRs on similar grounds. The denial was based on Bird Buddy's prior opportunity to litigate validity in district court, effectively precluding them from using the PTAB as an alternative forum to "undo" a litigation outcome. This means that for Bird Buddy, Inc., the prior-art grounds that were (or could have been) raised in the district court are effectively unavailable for another PTAB challenge. For other potential petitioners, the Director's precedential decision on discretionary denials indicates a heightened scrutiny for IPR petitions filed in parallel with or subsequent to district court litigation, especially those attempting to relitigate issues.

A clear pattern signal is the USPTO Director's increased emphasis on discretionary denials, particularly in cases involving parallel district court litigation or attempts to revisit validity arguments. The Director's office has moved to a more centralized model for institution decisions and has issued new guidance, including considering U.S. manufacturing activity and prioritizing AIA proceedings as alternatives to litigation rather than additional or duplicative challenges. The denial in IPR2026-00141 reflects this broader policy shift, making the PTAB a significantly more patent-owner-friendly forum, especially for patents that have already faced validity challenges in other venues.

Recommended next steps

Since IPR2026-00141 resulted in a discretionary denial of institution, no claims of US11627242 were invalidated. The patent claims remain intact as far as PTAB proceedings are concerned.

There are no active PTAB proceedings currently pending for US11627242, as IPR2026-00141 was denied institution. Therefore, there are no trial-stage milestones (institution decision deadline, oral hearing, FWD due date) to track.

For a defendant currently facing assertion of this patent, it is crucial to understand the implications of the Director's precedential decision on discretionary denials. While Bird Buddy, Inc. is largely estopped from re-challenging the patent via IPR on grounds that could have been raised in their district court litigation, other potential challengers may still consider IPRs, though they would need to carefully navigate the Director's evolving discretionary denial factors to avoid a similar outcome. The absence of a PTAB merits decision means the patent's claims have not been subjected to the rigor of a full IPR trial, and thus, an opportunity to challenge the patentability of the claims based on prior art not considered by the Examiner still exists for future, eligible petitioners.