TAKEAWAY: The USPTO has provided guidance on its process of discretionary denials in post-grant proceedings.
On March 26, 2025, USPTO Acting Director Stewart issued a memorandum entitled “Interim Process for PTAB Workload Management” which aims to improve the workload and efficiency of the Patent Trial and Appeal Board (PTAB) by exercising discretion in denying certain petitions for post-grant proceedings. Recently, Acting Director Stewart has given additional insight into how the considerations described in the memorandum may be applied.
The memorandum sets forth considerations to guide the Director’s process of discretionary denials in post-grant proceedings, such as inter partes review (IPR). One such consideration is “settled expectations.” This principle considers the age of a patent as a primary factor in determining whether to institute or deny a petition. Recent discretionary denials suggest that the longer a patent has been in force, the more “settled” it is deemed to be, weighing in favor of denial of an IPR.
On June 26, 2025, USPTO Acting Director Stewart issued denials for three IPR petitions in the matters of Intel Corporation v. Proxense LLC, in which she reaffirmed the principle of “settled expectations” but also provided guidance. She indicated that “a significant change in law” that “directly bears on the patentability of the challenged claims” may render discretionary denial due to “settled expectations” less appropriate. (Petition Decision at p. 2). Acting Director Stewart also indicated showing that the challenged patent has not been “commercialized, asserted, marked, licensed, or otherwise applied in a petitioner’s particular technology space, if at all” may also weigh against denial. (Id at pp. 2-3).
For patent owners, the principle of “settled expectations” may come as a welcome relief to the potential threat of patent challenges made via IPR. While the principle of “settled expectations” may therefore help weigh in favor of discretionary denials of certain IPR petitions, it is still important to consider the ways that “settled expectations” will be interpreted and applied in the coming times.