The U.S. Patent and Trademark Office (USPTO) continues to refine its approach to post-grant patent proceedings, particularly under the America Invents Act (AIA), balancing efficient adjudication with fairness to parties. One increasingly important concept shaping agency policy is “settled expectations.” While rooted in administrative law, this doctrine has significant implications for patent owners and petitioners alike—especially in the realm of Inter Partes Review (IPR) and other PTAB proceedings.
New Bifurcated Institution Process Changes the Game
In March 2025, Acting Director Stewart issued a memo introducing a bifurcated institution process for post-grant matters. Specifically, the Director evaluates discretionary-denial factors. If no denial, then a panel of judges, e.g., APJs, proceed to examine the merits and statutory issues within 6 months of filing of the petition. Among the newly emphasized factors is a patent owner’s argument based on “settled expectations” which factors in the time a patent has been in force and the Petitioner’s (i.e., usually a Defendant in an infringement lawsuit) awareness of the patent.
iRhythm Case Establishes New Precedent for Patent Challenges
iRhythm case (IPR 2025‑00363, et al.), decided June 6, 2025
iRhythm filed IPR petitions challenging multiple Welch Allyn patents issued as early as 2012. iRhythm had cited one of the patents in its own Information Disclosure Statement (IDS) back in 2013, demonstrating early awareness of the patent. iRhythm waited until 2024 to file for review.
Despite other precedential Fintiv-based factors weighing against discretionary denial, such as for example district court timelines and a high likelihood of stay, the Acting Director still denied institution. Here, the decisive factor was iRhythm’s delay and long-standing awareness of the patent based on citing the patent in an IDS giving rise to settled expectations, which outweighed other considerations.
Strategic Implications for Patent Practice
The iRhythm case marks the debut of a significant shift in PTAB practice. Namely, aging patents can avoid an IPR review, especially when petitioners delay filing. This introduces new strategies for early action and briefing in IPR filings.
Key Strategic Considerations for Patent Practitioners
1. Treat IDS Filings as Evidence of Patent Awareness – If you cite a competitor’s patent in an IDS, it may later be used against you as proof you had knowledge of the patent long before challenging it in an IPR.
2. Be Strategic and Judicious with IDS Submissions – avoid causally citing a large volume of irrelevant patents, particularly of key competitors, which may create a record of notice for patents you may one day wish to challenge.
3. Use IDS Citations Proactively as a Patent Owner – If a major competitor cites your patent in an IDS, it may help defend against IPRs later by showing long-standing public awareness. This point may be raised in litigation or IPR proceedings, under the settled expectations doctrine.
Moving Forward with Settled Expectations Strategy
This evolving doctrine requires patent practitioners to reconsider their approach to both offensive and defensive patent strategies. Patent owners now have additional tools to defend against late-filed challenges, while potential petitioners must carefully weigh the timing of their challenges against the risk of settled expectations arguments.
The settled expectations framework also emphasizes the importance of comprehensive patent landscape monitoring and strategic decision-making about when and how to challenge competitor patents. Companies must now factor in their historical awareness and public acknowledgment of patents when developing IPR strategies.
Need help evaluating your current patent filing plans, conducting due diligence in a particular market, or updating your strategic IP governance policies? Contact us at CrossBorder IP for a hassle-free, complimentary consultation.