Settled Expectations: When is a Patent Safe from Challenge at the PTAB?

This week on IPWatchdog Unleashed my conversation is with Kevin McNish, who is a registered patent attorney who represents clients in inter partes reviews (IPR), post-grant reviews (PGR), ex parte reexaminations, and other proceedings before the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO).

I invited McNish to join us for a conversation about PTAB practice and how it has evolved over the last several months, and to specifically discuss one of the more intriguing criteria being used by the USPTO to discretionarily deny institution of IPR challenges—the settled expectations of the patent owner.

The issue of discretionary denials generally is one that has been front and center once again since at least the end of March. Those familiar with PTAB practice will recall that during the tenure of USPTO Director Andrei Iancu, during the first Trump Administration, he supported a more aggressive use of the Director’s power to discretionarily deny IPR challenges. This manifest itself in so-called Fintiv denials, named after the case that supercharged discretionary denials—Apple v. Fintiv (IPR2020-00019).

Interest in using discretion to deny IPR challenges waned during the Biden Administration under the leadership of USPTO Director Kathi Vidal. But with the reelection of President Trump renewed interest in discretionary denials of IPR challenges quickly took hold at the USPTO.

At the end of March, Acting Director Coke Morgan Stewart sent a memorandum to all Administrative Patent Judges (APJs) of the Patent Trial and Appeal Board (PTAB) detailing a new interim process for workload management, which bifurcated decisions on whether to institute an IPR or PGR between discretionary considerations that are now addressed by the Director and the merits and other statutory considerations, which are considered by a PTAB panel. This bifurcated approach has led to a significant decline in the number of IPRs that have been instituted.

Acting Director Stewart identified seven non-limiting factors she would consider when determining whether discretionary denial of an IPR petition is warranted. One of those factors is the settled expectations of the parties, including the length of time the claims in the patent have been in force. And in recent weeks we have learned a purchaser of a patent can functionally inherit the settled expectations of the original patent owner, which was decided in a case where the patent was 17+ years old at the time of challenge, but which has been acquired in 2021. See SAP America, Inc. v. Valtrus Innovations Ltd. (IPR2025-0041). It was McNish’s post on this case, which I saw on LinkedIn, that led me to invite him to join us for IPWatchdog Unleashed.

Over the last several weeks there have been several other decisions by Acting Director Stewart that have continued to build upon our understanding of the settled expectations factor. And, according to McNish, “by all appearances, ‘settled expectations’ decisions are converging toward a bright-line rule warranting discretionary denial starting six years after issuance, which would track the Acting Director’s previous analogy to the six-year damages lookback in the Dabico decision.”

So, it is against this backdrop that I spoke with McNish on Friday, July 25, 2025. If this issue is of interest to you, in addition to listening to our conversation, I suggest you take a look at there LinkedIn posts by McNish—here, here, here and here.

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