Licensing Considerations In Informative Discretionary Denial Decisions, PTAB Litigation Blog

On January 9, the USPTO designated as informational two recent Director decisions involving licensing activities, highlighting the evolving nature of “settled expectations” in discretionary denial determinations. The decisions—Apple Inc. v. Allani (IPR2025-00856) and Alliance Laundry Systems v. PayRange (IPR2025-00950)—reached opposite outcomes, but both demonstrate how licensing-related factors can significantly influence whether the Director exercises discretion to deny institution.

In Apple v. Allani, Patent Owner sought discretionary denial of Apple’s petitions challenging two patents. Patent Owner argued that the challenged patent in IPR2025-00856 had been in force for thirteen years, creating strong settled expectations. The Director acknowledged this factor weighed in favor of denial. Nevertheless, Apple successfully argued that it did not expect enforcement of the patent because it had concluded it did not require a license and had advised Patent Owner of its position.