In Dabico Airport Solutions Inc. v. AXA Power APS, IPR2025-00408, Paper 21 (P.T.A.B. June 18, 2025), the Acting Director discretionarily denied institution of the inter partes review (IPR) based on "settled expectations," even though the patent owner never raised it for consideration.
Although the opinion acknowledged that "there is no bright-line rule," in this case, it argued the fact that the "challenged patent ha[d] been in force for almost eight years" created settled expectations. This is nearly four years less than the challenged patent in iRhythm Technologies, Inc. v. Welch Allyn, IPR2025-00363, -00374, -00376, -00377, -00378, Paper 10 (PTAB June 6, 2025), where the patent had been in force for twelve years and was found to have created settled expectations.
Furthermore, in iRhythm, there was evidence that the petitioner was aware of the patent, based on an information disclosure statement. Here, there was no evidence that the petitioner had specific notice or knowledge of the patent. Instead, the opinion relied only on the publication of the issued patent to provide constructive notice to the public and competitors.
This opinion is particularly notable in that the patent owner did not raise "settled expectations" for consideration. Instead, the Acting Director appears to have sua sponte applied settled expectations to the IPR. In doing so, the Director clarified that petitioners' briefings must not only respond to the patent owner's arguments but also affirmatively present all reasons why the Office should not exercise its discretion to deny institution.
This directly contradicts the previous guidance on this issue given by the PTAB. In the Boardside Chat, APJ Michelle Ankenbrand was asked how the Board would handle situations where the patent owner did not raise an issue, and in response indicated the Director would not be looking for issues outside the briefing:
Q: "So, if a patent owners discretionary denial briefing does not mention certain discretionary issues or certain factors that were enumerated on the slides earlier, will the Board treat those particular factors as having been waived and such that petitioner doesn't need to talk about those factors?"
A: "How I would answer this is I would say the party should talk about whatever factors they think are important to their case. Obviously, you know, the director will have the briefing that the director has. So, if a patent owner hasn't raised a particular issue, I don't foresee the director trying to make up a case for that issue. We're going to rely primarily on the parties to bring the issues before or the director is going to rely primarily on the parties to bring the issues before them, just like a board panel does on merits decision, right? The board panel isn't going to make a case for a petitioner or a patent owner. They would expect the parties to do that. And so, we would expect the same thing in the discretionary briefing."1
So, contrary to the previous guidance, petitioners must go beyond merely rebutting the patent owner's arguments. They are expected to proactively present all relevant reasons why institution should not be denied. Failing to do so may result in denial, even if persuasive grounds for review exist.
Footnote
1. USPTO, PTAB Boardside Chat: Interim processes relating to institution in AIA proceedings, YouTube, 27:43–28:53 (Apr. 28, 2025), https://www.youtube.com/watch?v=TwaTg4pbfPg&t=1663s (emphasis added).
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