An Update on “Settled Expectations” for Discretionary Denials of IPRs
Last month USPTO Acting Director Stewart denied institution of an IPR in Dabico Airport Solutions v. AXA Power, IPR2025-00408, Paper 21 (June 18, 2025), based on “settled expectations.” As discussed here, the patent at issue in Dabico Airport had been in force for eight years, which was found to have created strong expectations in favor of maintaining the claims, with Director Stewart comparing the time the patent had been in force to the six-year statute of limitations for filing patent infringement. In finding “settled expectations” sufficient to deny institution of the IPR, Director Stewart stated that “there is no bright-line rule on when expectations become settled.”
Other IPR denials issued since Dabico Airport seem to indicate that there is a de facto presumption of strong settled expectations when a patent has been in force for six years, with a presumption that there are no significant settled expectation in favor of maintaining the claims when a patent has been in force for less than six years. (No denial has yet, to my knowledge, referred to these explicitly as “presumptions,” but that is what the cases taken together seem to indicate.) However, both of these “presumptions” are rebuttal, with some guidance provided on how the presumptions might be overcome.
With regard to the time since patent issuance that a presumption of settled expectations takes effect, compare Amgen, Inc. v. Bristol-Myers Squibb Co., IPR2025-00601, Paper 9 (July 24, 2025) with Webgroup Czech Republic, A.S. v. Dish Techs. LLC, IPR2025-00467, Paper 14 (July 16, 2025). In Amgen a patent that issued in 2022 was characterized as not having “been in force for a significant amount of time.” For other patents in Amgen that had “been in force for seven and six years, respectively,” there were “strong settled expectations.” Webgroup involved a series of four patents, issued two to six years ago (in 2019, 2021, 2022, and 2023). All of these were characterized as not having “been in force for a significant amount of time.” Putting these two cases together, it looks like the cutoff for a presumption of strong settled expectations is about six years.
Amgen provided some examples of circumstances where a patentee may have strong settled expectations for a patent issued less than six years earlier (three years for the patent at issue). Such a situation may occur where there has been “an extraordinary amount of investment, time, and resources dedicated to research, development, trials, and regulatory approval,” all of which “correlates to settled expectations.”
With regard to overcoming a presumption of settled expectations for a patent long in force, some examples of how that might accomplished were given in Intel Corp. v. Proxense, LLC, IPR2025-00327, Paper 12 (June 26, 2025):
For example, a significant change in law may have occurred since the patent issued, and a petitioner can explain how that change in law directly bears on the patentability of the challenged claims. As another example, a patent may have been in force for years but may not have been commercialized, asserted, marked, licensed, or otherwise applied in a petitioner’s particular technology space, if at all. These non-exclusive examples provide considerations that weigh against a patent owner’s claim of settled expectations and bears on the Director’s discretion.
Settled expectations are not the only factor important in discretional denials of IPRs, since the existence and timeline of parallel litigation has also been an important factor in several discretionary denials. But with regard to settled expectations there appears to be a de facto rebuttable presumption coming into shape, pegged to six years from patent issuance.
The attorneys at Renner Otto will continue to monitor the flurry of precedent setting actions, including IPR discretionary denials and will provide updates. Please contact us with questions on this or other intellectual property topics.