PGR Petitions Are “Favored”

by | May 26, 2026 | PGR, PTAB News, PTAB Trial Basics

By Elizabeth Schrieber and Matt Johnson –

In Multi-Color Corp. v. Brook & Whittle Ltd., PGR2025-00025, the PTAB declined to discretionarily deny institution of Multi-Color’s post-grant review petition.  The decision, designated as precedential in January 2026, makes clear that PGR petitions occupy a favored position in the PTAB’s discretionary denial calculus.

Based on PTAB developments in 2025, it looked like Brook and Whittle, the patent owner, held a favorable position heading into institution.  The patent at issue was already the subject of two parallel district court proceedings in the Eastern District of Texas and in the District of Delaware.  And trial was set in the E.D. TX. for May 18, 2026, roughly four months before the PGR’s final written decision deadline.  Thus, the district court would have  likely resolved the patent’s validity before the PTAB.  In the IPR context, this kind of timing overlap has historically been one of the strongest arguments for discretionary denial under the Fintiv framework.

But these favorable facts did not persuade the PTAB.  Several factors tipped the balance in favor of institution:  Multi-Color was not a party to either district court case and had no substantive relationship with any defendant in those proceedings, no trial date had been set in the Delaware action, and Petitioner Multi-Color showed that denial under § 325(d) was not appropriate.  Critically, this decision emphasized the principle from LifeVac, LLC v. DCSTAR favoring petitions for post-grant review because “they must be filed no later than nine months from the grant of the patent (35 U.S.C. § 321(c)), are close in time to examination, and occur before expectations in the patent rights are strongly settled”.

In the IPR context, discretionary denial under Fintiv and related precedent has become a potent tool for patent owners seeking to fend off PTAB challenges, particularly when parallel district court litigation exists.  But this decision signals that those same arguments carry less weight in the PGR context.  The tight filing window and proximity to examination give PGR petitions an inherent legitimacy that, in the PTAB’s view, outweighs the efficiency concerns underlying Fintiv.

Patent challengers should view PGR as a more reliable path to institution, at least when discretionary denial is the primary risk.  Patent owners, meanwhile, should recognize that defeating a PGR petition at the institution stage through discretionary arguments alone will be more difficult than defeating an IPR challenge.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.