Alerts6.12.25
First-of-Its-Kind USPTO Ruling Denies Inter Partes Review, Noting Delay and Patent Age
Highlights
- 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.
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