Acting Patent Director Discretionarily Denies Inter Partes Review Due to “Settled Expectations”

On June 6, 2025, Acting Director of the U.S. Patent and Trademark Office Coke Morgan Stewart issued a new and important decision on discretionary denial of inter partes review proceedings.  The decision was issued pursuant to the new processes for considering discretionary denial implemented by Acting Director Stewart in March 2025.  Honigman’s prior alerts about the Patent Office’s changes to discretionary denial are available here and here. 

The Patent Office’s March 2025 memorandum on the new discretionary denial process identified several factors the Director would consider in determining whether to discretionarily deny institution.  One listed factor is “settled expectations of the parties, such as the length of time the claims have been in force.”  Before the memorandum, this was not a factor that the Patent Trial and Appeal Board would directly consider when evaluating discretionary denial, and the precise implications of this factor remain to be seen. 

But in the Acting Director’s June 6, 2025 decisions in the cases of iRhythm Techs., Inc. v. Welch Allyn, Inc.,[1] the Acting Director relied exclusively on this factor to discretionarily deny institution.  Specifically, the Acting Director found that several considerations weighed against discretionary denial, particularly the more traditional Fintiv factors, which consider issues relating to parallel district court litigation.  Nonetheless, because one of the five challenged patents had been in force since 2012, and the patent challenger knew of it as early as 2013, the Acting Director concluded that “settled expectations favor denial of institution.”

An important detail about the patent challenger’s prior knowledge of the challenged patent is that it did not arise from an accusation of infringement from the patent owner.  Instead, in 2013, the patent challenger had cited the then-pending application of the challenged patent in an Information Disclosure Statement (“IDS”) that the patent challenger filed in connection with its own patent application.

The iRhythm decisions are the first to rely on the “settled expectations” factor to discretionarily deny institution and suggest that the Acting Director may weigh this factor heavily as part of the discretionary denial analysis. The decision has important implications for both patent litigation and prosecution strategies, including IDS practice. 

Honigman continues to closely monitor all activities and announcements from the U.S. Patent and Trademark Office. If you have questions about the Patent Office’s new discretionary denial procedure, prosecution strategy, or other changes at the USPTO, please contact one of Honigman’s Intellectual Property Attorneys.

[1] Case Nos. IPR2025-00363, IPR2025-00374, IPR2025-00376, IPR2025-00377, IPR2025-00378.