- In a first-of-its-kind decision, the USPTO's acting director has exercised her discretion to deny institution of inter partes review considering, among other things, the age of the challenged patents and "settled expectations."
- The acting director, reviewing petitions filed in 2024, noted "one of the patents has been in force since as early as 2012 and [the challenger] was aware of it as early as 2013."
- According to the acting director, the decision was "based on a holistic assessment of all of the evidence and arguments presented" with the challenger's awareness and "failure to seek early review of the patents" favoring denial.
In a first-of-its-kind decision, the acting director of the United States Patent & Trademark Office (USPTO) has exercised her discretion under 35 U.S.C. § 314(a) to deny five petitions for inter partes review (IPR) citing, among other things, the age of the patents and "settled expectations." The first of the challenged patents was issued by the USPTO in July 2012, while the other challenged patents — continuations of the first — issued in 2015 and 2018. The patent owner filed its complaint alleging patent infringement in February 2024, and the petitioner responded by filing its IPR petitions in December 2024.
These IPR petitions were subject to the recent Interim Processes for PTAB Workload Management Memorandum issued by the acting director on March 26, 2025. In this new process, the decision of whether to institute IPR is bifurcated between (i) discretionary considerations, decided by the acting director, and (ii) merits and other non-discretionary statutory decisions, decided by a three-judge panel of the Patent Trial and Appeal Board (PTAB). In addition to discretionary considerations that had been applied more frequently by the PTAB in the past, the Memorandum noted that "[s]ettled expectations of the parties, such as the length of time the claims have been in force; [c]ompelling economic, public health, or national security interests; and [a]ny other considerations bearing on the director's discretion" would also be considered during the first phase of the new bifurcated procedure.
The patent owner asked the acting director to exercise her discretion to deny the IPR petitions for several reasons, including alleged "decades of delay" in challenging the patents. As evidence of this delay, the patent owner cited a 2010 statement suggesting that the petitioner had conducted "IP searches" and clearance of its product. The patent owner also noted that the petitioner had submitted Information Disclosure Statements in one of its own patent applications that cited the pre-grant publication of the first patent (in 2013) and the first patent itself (in 2015).
The acting director determined that "[s]everal arguments weigh against discretionary denial" (emphasis added), including the likelihood of final written decisions issuing in each IPR before the district court trial occurs and the petitioner's proper use of expert testimony. "Nevertheless," the acting director found the patent owner's "settled expectations" argument "persuasive" and ultimately denied the petitions. The acting director stated that "the determination ... is based on a holistic assessment of all of the evidence and arguments presented," including the petitioner's "awareness of [the patent] applications and failure to seek early review of the patents" after the Patent Owner pointed out that "one of the patents has been in force since as early as 2012 and [the petitioner] was aware of it as early as 2013."
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