PTAB Post-Grant Checklist: A Practical Checklist

Document type: Checklist Practice area: Intellectual Property — Patents Jurisdiction: United States (federal) Last reviewed: 5 September 2026

Part 1 — The petitioner's decision (week one)

Separate the art. Printed publications and patents (usable at the Board) versus public use, on-sale activity, and system art (not usable, not estopped).
List every district court invalidity ground, then cross out everything that is patents-and-printed-publications. What remains is your post-IPR defense.
Is the primary defense non-infringement? The Board cannot decide it.
Are there § 101 or § 112 grounds? Not available in an IPR under § 311.
What is the district court trial date, and will the court stay?
Was the best art before the examiner? Prepare the § 325(d) answer.
What does the proceeding cost, against the cost of the same fight in district court?
Should co-defendants join a single petition?
Document the analysis in a memorandum.
Check the current discretionary denial guidance. It has moved more than once.

Part 2 — Real party in interest (a discrete workstream)

List every entity served with a complaint on this patent: the client, parents, subsidiaries, suppliers, customers, indemnitors, and every joint defense group member.

For each entity, determine:

Does it fund the petition, in whole or in part?
Does it direct or control — selecting counsel, approving strategy, reviewing drafts?
Does it have a right to control?
Is there an indemnity obligation, and what does it entitle the indemnitor to?
Would it benefit from cancellation?
Is there a corporate, contractual, or joint-defense relationship establishing privity?
When was it served?
Confirm the petition is within one year of service on every real party and privy — § 315(b).
Confirm no petitioner previously filed a civil action challenging validity — § 315(a).
Err toward disclosure. Naming creates estoppel; omitting can void the petition, and the Board's determination is unreviewable after Thryv, Inc. v. Click-To-Call Technologies, LP, 590 U.S. 45 (2020).
Record the funding and control facts contemporaneously.

Part 3 — Prior art development

Commission a comprehensive search — the estoppel standard reaches what a diligent search would find, so the search defines your exposure as well as your case.
For each printed publication, confirm public accessibility: how it was indexed, distributed, and available. Manuals, theses, and standards drafts require evidence.
Preserve system art, public use, and on-sale evidence separately, and do not discuss it in the petition.
Build the motivation to combine with evidence: the problem the artisan faced, what each reference teaches about solving it, why one would look to the other, and the expectation of success.
Engage the technical expert in the first month.
Confirm claim construction positions and check them against the district court positions.

Part 4 — Drafting the petition

Fewer grounds, fully developed. After SAS Institute Inc. v. Iancu, 584 U.S. 357 (2018), institution is all grounds or none, so weak grounds drag strong ones.
Challenge all claims asserted in district court, to maximize the simplification argument for a stay.
Identify all real parties in interest and related matters.
State grounds for standing.
Provide claim construction where a term requires it.
Element-by-element claim charts, with reference language quoted and cited by page and line.
Tie every expert opinion to a specific chart entry.
Write a motivation-to-combine section that does real work — this is where petitions fail.
Comply with the word limit; it is real.
Comply with 37 C.F.R. Part 42 formalities.

Address discretion in the petition:

State the filing date relative to the complaint.
State the district court schedule and any stay motion filed.
Offer the stipulation, in specific terms.
Address overlap with the district court invalidity contentions.
For any art before the examiner, explain specifically what the Office did not appreciate.

Part 5 — The stipulation and the stay

Stipulation:

Decide narrow (the petition's grounds) or broad (any ground raised or reasonably could have been raised).
Recognize the broad form is substantially more persuasive and costs grounds you would be estopped on anyway.
Include it in the petition, the stay motion, and any reply on discretion.

Stay motion:

File promptly after institution, or before where local practice permits.
Simplification: quantify how many asserted claims are challenged and what happens if they are cancelled.
Stage: discovery status, trial date, investment to date.
Prejudice: address the patent owner's position honestly — a competitor has a real argument; an NPE's remedy is money.
Lead with the stipulation.
Address any fourth factor the district applies (burden reduction).
If denied, reassess. Two tracks cost roughly 130 percent of one.
Note that the ITC does not stay for a co-pending IPR.

Part 6 — Patent owner: the preliminary response

File it. Roughly a third of petitions are denied and this is where.
Due within three months of the notice of filing date.

Argue in this order:

The bars. Section 315(b) with a real-party or privity theory: identify entities served more than a year ago and the funding, control, indemnity, joint-defense, or corporate relationship.
Request additional discovery on real party in interest where the facts are in the petitioner's hands.
Discretionary denial: the parallel litigation posture, the trial date, the investment, the overlap, and the adequacy of any stipulation.
Section 325(d): the same or substantially the same art or arguments were before the examiner, and no material error is shown.
The merits: a missing limitation; no adequate motivation to combine; a misread reference; a conclusory declaration.
Petition defects: incomplete charts, unexplained expert testimony, redundant grounds, inadequate construction — any one is an argument against the whole petition after SAS.
Consider a declaration, recognizing that genuine factual disputes are resolved for the petitioner at institution. Use it to establish facts, not opinions.

Part 7 — Patent owner: after institution

Attack the motivation to combine — the most productive line: different problems, teaching away, destruction of the primary reference's operation, no evidence of expected success.
Cross-examine the petitioner's declarant. Establish what was not reviewed, what the reference does not say, the steps the declaration glosses, and any inconsistency with positions taken elsewhere.
Develop secondary considerations with nexus: commercial success, long-felt need, failure of others, praise, copying, skepticism — tied to the claimed features, with support.
Check every claim construction position against the district court infringement case.
Comply with the duty to disclose information inconsistent with a position advanced.

Part 8 — Motion to amend

Model intervening rights first. Substitute claims not substantially identical to the originals can eliminate past damages entirely.
Confirm the alternative: is there a pending continuation in which new claims could be obtained without intervening rights and without the compressed schedule?
A reasonable number of substitute claims — presumptively one per challenged claim.
No broadening.
Written description support in the original disclosure, identified precisely.
Responsive to a ground of unpatentability.
Candor about the prior art of record.
Use the preliminary guidance procedure where available, and revise in response.

Part 9 — Discovery, hearing, and decision

Discovery:

Routine discovery: cited exhibits, cross-examination of declarants, information inconsistent with a position advanced.
Additional discovery only in the interests of justice — a demanding standard, granted sparingly.
Confirm the district court protective order permits use of designated material at the Board, and vice versa.

Oral hearing:

One hour per side, typically; no live testimony, no new evidence, no new arguments.
Serve demonstratives in advance; they may not contain new material.
Know the record by exhibit number.
Prepare a two-minute answer to the hardest question in the case.
Concede what is not in dispute.

Final written decision:

Addresses every challenged claim under § 318(a).
Estoppel attaches here — § 315(e).
Consider Director Review following United States v. Arthrex, Inc., 594 U.S. 1 (2021) where the panel departed from Board precedent.
Consider rehearing — demanding standard, identify what was misapprehended with record citations.
Calendar the appeal deadline; review is de novo on law and substantial evidence on findings under § 319.
Confirm Article III standing to appeal — a petitioner without injury may be unable to appeal a loss.

Part 10 — Running both tracks

Appoint one consistency owner who reviews every filing in both forums before it is served, checking:
- Claim construction positions.
- Expert statements.
- Characterizations of the prior art.
- Statements about the accused product.
Confirm protective orders in both forums accommodate cross-use.
Plan for each outcome: all claims cancelled; some cancelled; all upheld (estoppel applies — what survives?); denied institution (no estoppel); settled before decision (no estoppel).
If settling, address the IPR expressly — termination after institution is not automatic — and file the settlement agreement with the Board.

Part 11 — Choosing the vehicle

Post-grant review under § 321 — any ground including § 101 and § 112; only for effective filing dates on or after March 16, 2013, and only within nine months of issuance; broader estoppel.
Inter partes review — §§ 102 and 103 on patents and printed publications; estoppel on grounds raised or reasonably could have been raised.
Ex parte reexamination — patents and printed publications; anonymous if desired; no estoppel for a non-participating requester; but no participation rights.
Supplemental examination — a patent owner tool to address information that might support an inequitable conduct defense.
Derivation under § 135 — rare.
Reissue — patent owner correction, including broadening within two years; own intervening rights consequences.
District court — where the case is non-infringement, system art, or § 112.
Confirm a docketing process flags competitors' issuances so the nine-month PGR window is not missed.