Material Error by the Office Results in Referral Despite Patent Expiration

In Anthony Inc. v. ControlTec, LLC, IPR2025-00559 and IPR2025-00636, Paper 9 (PTAB July 16, 2025), the Acting Director of the USPTO Coke Morgan Stewart declined to exercise discretion to deny institution of petitions challenging U.S. Patent Nos. 7,207,181 and 7,421,847, even though these patents expired shortly before the expected institution decision date, based in large part on material error by the office during prosecution.

Anthony, Inc. (“Petitioner”) filed two IPR petitions, challenging U.S. Patent Nos. 7,207,181 and 7,421,847, directed to refrigeration units. Arguing that the challenged patents were nearing the end of their lifespan, having been in force since April 24, 2007, Patent Owner filed a request for discretionary denial of institution. Patent Owner argued that both patents would be expired by July 8, 2025, before the Board’s institution decision would have been due on August 24, 2025. Declining to exercise discretionary denial, the Acting Director determined that Petitioner had provided “persuasive reason, supported by evidence, that the Office erred in a manner material to the patentability of the challenged patents,” by not considering a prior art reference. Even though the challenged patents have been in force for approximately 18 and 17 years, the Acting Director explained that it is an “appropriate use of Office resources to review the potential error.”  As such, the petitions were referred to the Board. 

Notably, the age of a patent, or even the fact that it is expired, is not an automatic ground for discretionary denial of institution of an IPR when there has been a showing of a “material error” by the USPTO during prosecution. The decision highlights the public interest in correcting a potential error in examination and how this interest can be grounds for referral of a Petition to the Board.