USPTO's New Playbook: Fairness, Timing, and the Future of Patent Challenges

innovation and business strategy. Today we’re exploring a major shift in how the United States Patent and Trademark Office—better known as the USPTO—is handling inter partes review petitions.

Read the full article: USPTO Newest Discretionary Denials on Settled Expectations — Best Practices for Petitioners and Patent Owners

About the authors:

• Fabio E. Marino
• Yi S. Wilkinson, Ph.D.

Transcript

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Welcome to Womble Perspectives, where we break down the latest legal developments shaping innovation and business strategy. Today we’re exploring a major shift in how the United States Patent and Trademark Office—better known as the USPTO—is handling inter partes review petitions.

If you’re in the patent space, this one’s for you.

On June 6, 2025, Acting Director Coke Stewart of the USPTO issued a precedential decision that introduced a new discretionary denial factor: the “settled expectations” of the patent owner.

This came in the case of iRhythm Technologies v. Welch Allyn, Inc., where iRhythm filed five IPR petitions challenging four patents. One of those patents—the ‘007 patent—had been issued back in 2012. Interestingly, iRhythm had actually cited that patent in information disclosure statements in both 2013 and 2015.

Despite other factors that might have supported institution of the IPR, the Acting Director concluded that iRhythm’s awareness of the patent and its delay in seeking review tipped the scales. The takeaway? If you knew about the patent and waited too long, the USPTO may now consider that unfair—and deny your petition.

Just six days later, the USPTO doubled down on this new approach in Tessell, Inc. v. Nutanix, Inc. Tessell was founded by inventors of the very patent it was now challenging—the ‘336 patent. Nutanix argued that Tessell’s challenge undermined the inventors’ own prior assertions of the patent’s value.

The Acting Director agreed, calling it an inappropriate use of Office resources and denying the IPR under the principle of “unfair dealings.” This wasn’t just about timing—it was about equity.

Then came DABICO Airport Solutions v. AXA Power APS on June 18. Here, the USPTO clarified that “settled expectations” don’t require actual notice of a patent or infringement. The patent had been in force for nearly eight years, and that alone was enough to create a presumption of settled expectations.

The message? The longer a patent has been in force, the more likely the USPTO is to view it as settled—and the less likely it is to entertain a late-stage IPR.

So, what does this mean for you?

If you’re a petitioner, the USPTO is urging you to act early. Ideally, file a post grant review—or PGR—within nine months of a patent’s issuance. If that window has closed, don’t wait until the last minute. File your IPR as soon as you become aware of a potentially problematic patent.

And don’t forget to explain why your petition is a good use of USPTO resources. Address the “settled expectations” factor head-on. Show that your challenge is timely, fair, and necessary.

For patent owners, this is a new tool in your arsenal. If you’re facing an IPR, argue that your rights have matured, that expectations have settled, and that the petitioner’s delay is unfair. Highlight any prior knowledge or dealings that support your position.

The USPTO’s recent decisions mark a clear shift toward fairness, timing, and resource stewardship. The “settled expectations” factor is now a powerful consideration—and it’s changing how and when IPR petitions are evaluated.

For both petitioners and patent owners, the message is clear: be proactive, be strategic, and be prepared to argue your case not just on the merits, but on the equities.

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