New Informative Decision Applies the USPTO’s U.S. Manufacturing and Small Business Use of AIA Proceedings Memo

On June 15, 2026, the United States Patent and Trademark Office designated as informative a Patent Trial and Appeal Board decision, Tesla, Inc. v. Bulletproof Property Management, LLC, IPR2026-00204, Paper 14, where the Director denied the patent owner’s request for discretionary denial in part because the petitioner presented evidence of U.S. manufacturing.[1] This informative decision provides one of the first insights into how the Director may weigh the additional discretionary considerations outlined in the Office’s memorandum on U.S. Manufacturing and Small Business Use of AIA Proceedings.

Patent owner raised four main arguments in its request for discretionary denial. First, patent owner asserted that the Director should deny the petition in view of the co-pending district court litigation involving the same patent. Second, the patent owner argued that the asserted prior art was previously presented to the USPTO. Third, patent owner contended that it had settled expectations based on petitioner’s delay in challenging the patent and prior knowledge of the challenged patent. And finally, patent owner argued that the accused infringing products are composed of “30% to 40% of components sourced in foreign countries.”

Petitioner’s opposition responded to each of these arguments. First, petitioner argued that the co-pending litigation did not favor denial because the trial date had been vacated. Petitioner also stipulated not to pursue any grounds it reasonably could have raised in the IPR and other grounds involving combinations of system art with the asserted prior art. Second, petitioner asserted that all but one of the asserted references had not previously been presented to the Office. And petitioner argued that the Office materially erred when examining the one reference that was previously presented. Third, petitioner countered that it challenged the patent within two years of its issuance. Finally, petitioner provided evidence of its manufacturing activities in the U.S. related to the accused products.

The Director noted that “discretionary denial is not appropriate in these proceedings” based on the first three arguments alone. The Director further concluded that “[p]etitioner’s evidence of U.S. manufacturing is more persuasive and further demonstrates that discretionary denial in these proceedings is not appropriate,” noting that patent owner did not provide supporting evidence for its manufacturing arguments.   

Endnotes

[1] Tesla, Inc. v. Bulletproof Property Management, LLC, IPR2026-00204, Paper 14 (Director June 15, 2026) (informative).

[2] See U.S. Patent and Trademark Office, Memorandum: Additional Discretionary Institution Considerations – U.S. Manufacturing and Small Business Use of AIA Proceedings (2026).