By David Linden and Dave Maiorana –
The Acting Director ssued a decision declining to exercise discretionary denial in three related inter partes reviews (“IPRs”) filed by Padagis US LLC (“Padagis”): IPR2025-00464, IPR2025-00465, and IPR2025-00466 (collectively, “the Padagis IPRs”). These IPRs challenge U.S. Patent Nos. 8,895,546; 11,241,414; and 11,793,786, respectively, each of which is assigned to Neurelis, Inc. (“Neurelis”). On January 9, 2026, current USPTO Director John Squires designated the decision as informative.
Neurelis filed a request for discretionary denial, arguing that the proceedings should be denied institution in light of an upcoming district court trial scheduled for February 9, 2026—a date well before the projected final written decision due date of September 17, 2026. The Acting Director acknowledged that this timing factor ordinarily weighs in favor of discretionary denial.
However, other factors counseled against discretionary denial. Importantly, the proceedings raise issues similar to those previously adjudicated in IPR2019-00451, involving related U.S. Patent No. 9,763,876 (“the ’876 Patent”). In that prior proceeding, the PTAB found the challenged claims unpatentable, a decision affirmed by the Federal Circuit. As part of the unpatentability decision, the PTAB determined that the claims at issue were not entitled to the priority date of provisional application 61/040,558 (“the ’558 Provisional Application”). Critically, despite this prior Board determination, the patent examiner during prosecution of the patents now challenged in IPR2025-00465 and IPR2025-00466 concluded that the claims were entitled to the priority date of the same ’558 Provisional Application. The Acting Director found that because Pedagis demonstrated significant overlap in claimed subject matter between the claims challenged in IPR2019-004551 and those in the Pedagis IPRs, this conclusion by the examiner directly contradicted the PTAB’s earlier determination, raising concerns of material error such that review is an appropriate use of Office resources, citing Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential).
The Acting Director also noted that the challenged patents in IPR2025-00465 and IPR2025-00466 have not been in force for a significant period of time, having issued in 2022 and 2023, respectively. Thus, Neurelis had not developed strong settled expectations that would favor discretionary denial. Additionally, because all three challenged patents are part of the same family and raise the same priority issue regarding the ’558 Provisional Application, it would be an efficient use of Board resources to address them together. The Acting Director also cited evidence presented by Pedagis that a stay may be granted in the related district court case if an IPR is instituted.
For these reasons, the Acting Director denied Neurelis’s request for discretionary denial and referred the petitions to the PTAB to issue an institution decision addressing the merits and other non-discretionary considerations.
Takeaway
Petitioners seeking to overcome arguments for discretionary denial should emphasize any prior PTAB or Federal Circuit determinations that raise concerns of material error by the Patent Office or otherwise weigh against discretionary denial. Such precedents may justify the use of Office resources for review, even when other factors favor discretionary denial.
David Maiorana
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