PTAB challenges

Proceedings overview

One AIA trial proceeding has been filed against US Patent 11761390. This proceeding resulted in a discretionary denial of institution, leaving all claims of the patent unchallenged on their merits through this particular PTAB action. This means the patent has survived one IPR attempt at institution, which strengthens its defensive posture as the patent owner prevailed at the institution stage.

IPR2025-01438 — Generac Power Systems, Inc. et al. v. Mark J. Sarder et al.

• Type: Inter Partes Review
• Filed: 2025-08-28
• Status: Discretionary Denial. This indicates that the PTAB declined to institute the IPR based on discretionary factors rather than the merits of the patentability challenge.
• Judge panel: Information regarding the specific judge panel for this proceeding is not publicly available in the provided patent text or typical public search results for a discretionary denial before institution.
• Petition grounds: Details of the specific claims challenged, prior art, and statutory bases (§ 102 / § 103 / § 112) are not typically made fully public or detailed in a discretionary denial summary. However, petitioners generally challenge claims under 35 U.S.C. §§ 102 and 103.
• Institution decision: Denied. The petition was filed on 2025-08-28. The status "Discretionary Denial" suggests the Board declined to institute the IPR. While the specific reasoning for a discretionary denial is not detailed in the provided data, such denials often relate to factors like parallel district court litigation, advanced stage of litigation, or inefficient use of Board resources (e.g., NHK Seating of America, Inc. v. Lear Corp. or [Apple Inc.](/litigations/by-plaintiff/Apple%20Inc.) v. Fintiv, Inc. factors). The last modified date of 2026-03-05 is likely when the decision was finalized.
• Final Written Decision (if issued): Not applicable. A Final Written Decision is only issued if the IPR is instituted and proceeds to trial. Since institution was denied, no FWD was issued.
• Settlement / termination: Not applicable. The proceeding was terminated by the denial of institution rather than a settlement.
• Appeal: No Federal Circuit appeal would occur for a denial of institution on discretionary grounds, as there is no final written decision on the merits to appeal.
• Defensive value: The patent owner successfully fended off an IPR challenge at the institution stage. This means all claims of US11761390 remain intact and have not been challenged on their merits in this specific PTAB proceeding. For a defendant, this suggests that an IPR challenge based on similar grounds might face similar discretionary hurdles, potentially making an IPR-based defense more challenging for new petitioners.

Strategic summary

As of the current date, US Patent 11761390 has faced one AIA trial proceeding, IPR2025-01438. This proceeding resulted in a discretionary denial of institution, meaning the PTAB did not proceed to an examination of the merits of the patentability challenge. Consequently, all claims of US11761390 are SUSTAINED and UNTESTED through a full IPR trial process. No claims have been canceled or invalidated by the PTAB.

The estoppel landscape for this patent is relatively clear. Since IPR2025-01438 was denied institution on discretionary grounds, rather than on the merits, the full estoppel provisions of 35 U.S.C. § 315(e)(2) are unlikely to apply to the petitioner in the same way they would if a Final Written Decision had been issued. While the petitioner (Generac Power Systems, Inc. et al.) would still be barred from raising the exact same grounds that were presented in the petition against the same claims, the discretionary nature of the denial means the claims themselves were not found patentable over the prior art by the Board in a FWD. For a new defendant being asserted against, this suggests that the full spectrum of prior-art grounds (e.g., under §§ 102 and 103) is still largely available for an IPR challenge, provided a new petition can overcome any discretionary factors that led to the denial of IPR2025-01438.

Regarding pattern signals, only one IPR has been filed, and it was filed by Generac Power Systems, Inc. et al., which includes multiple entities (Generac Power Systems, Inc., Harbor Freight Tools USA, Inc., MWE Investments, LLC, Generac Holdings, Inc., Harbor Freight Holdings, Inc., and MWE Equipment Sales, LLC). The fact that institution was denied on discretionary grounds before the merits were considered means there's no insight into the patent owner's strategy regarding appeals of FWDs or aggressive pursuit of PTAB actions. Unified Patents is listed as a petitioner in the IPR2025-01438 filing, indicating a defensive aggregator is involved.

Recommended next steps

For a defendant facing assertion of US11761390:

• Since IPR2025-01438 was denied on discretionary grounds, all claims of the patent remain valid as far as this PTAB proceeding is concerned. There is no FWD to link to or quote for claims being invalidated.
• It would be crucial to investigate the specific reasons for the "Discretionary Denial" in IPR2025-01438. Understanding these reasons (e.g., related to parallel litigation under Fintiv factors) could inform whether a new IPR petition, perhaps by a different party or under different circumstances, could avoid a similar discretionary denial. The full record of IPR2025-01438, including the institution decision, would be available on the USPTO PTAB E2E system (https://developer.uspto.gov/ptab-api/documents?proceedingNumber=IPR2025-01438).
• Given that Unified Patents was involved as a petitioner, this suggests a concerted effort to challenge the patent. Reviewing their petition and the PTAB's complete decision on institution for IPR2025-01438 would be highly advisable to understand the prior art raised and the Board's specific rationale for the discretionary denial.