Timing is Everything: PTAB’s Renewed Reliance on Litigation Timelines and Patent Longevity

by Dennis Crouch

In 2025, the USPTO’s Acting Director Coke Morgan Stewart began implementing a new bifurcated and expanded process for PTAB trial institution decisions — with a particularly enhanced focus on discretionary denials before a PTAB panel even considers the merits.  This past week, several dozen new discretionary denials were released. These new decisions primarily focus on two justifications for denial:

1. The status of parallel litigation, especially the proximity of a scheduled district court trial to the PTAB’s projected final written decision date; and
2. The “settled expectations” arising from a patent’s long time in force.

In each case, the decision states a holistic “totality of the evidence and arguments” approach, but in most cases these two factors were the keys.

Perhaps most notable among recent decisions is the Director’s increasing reliance on the concept of “settled expectations.” This factor refers to the notion that patent owners and market participants have some reliance interest based upon the fact that the patent that has remained unchallenged for a significant period.