PTO Creates New Expectations Regarding Discretionary Denials

On the heels of the U.S. Patent and Trademark Office Acting Director's recent decision to deny institution of iRhythm Technologies' inter partes review petition, the PTO has now issued additional decisions clarifying the role of parties' "expectations" in IPR proceedings. Along with the Acting Director's guidance regarding discretionary denials of institution, decisions on two recent petitions further illuminate the PTO's view of which factors should be given weight in deciding whether to deny an IPR petition.

As we previously discussed, in denying institution of iRhythm's IPR petition, the Acting Director explained that iRhythm's disclosure of the challenged patent 12 years prior in an information disclosure statement (IDS) indicated it had long been aware of the patent and failed to seek early review. The Acting Director concluded that this factor weighed heavily in favor of denial—even more so than traditionally Fintiv-style factors, such as time-to-trial,