Coke Stewart, the Acting Director of the U.S. Patent & Trademark Office (USPTO) recently issued an eye-raising decision in several inter partes reviews (IPRs) between iRhythm Technologies, Inc. and Welch Allyn, Inc. (IPR2025-00363, -00374, -00376, -00377, and -00378).  She used her discretion to deny instituting the proceedings because iRhythm had apparently known about the challenged patent for over ten years. 

iRhythm cited the published application version of the challenged patent in an Information Disclosure Statement for one of its own patent applications back in 2013.  Welch Allyn argued that “settled expectations” favored denying institution.  Acting Director Stewart agreed: “Petitioner’s awareness of Patent Owner’s applications and failure to seek early review of the patents favors denial and outweighs the above-discussed considerations.” 

This is a new wrinkle to the discretionary denial analysis.  It’s understood that many IPRs are filed as a response to an infringement lawsuit.  Whether to deny institution on a discretionary basis typically evaluates relative interplay between the district court proceedings and the possible IPR, e.g., contrasting conclusion dates, whether issues overlap, merits of the petition, etc.  The iRhythm decision now suggests there could be a “statute of limitations” type factor that can outweigh others under certain circumstances. 

It is yet to be seen how this will play out in other cases, or if this decision will remain relevant once John Squires officially takes over as USPTO Director, but for now, Petitioners and Patent Owners should be aware.  Petitioners should double check their records to see when they became aware of the patent they intend to challenge.  The longer ago that was, the trickier it might be to get a petition through under this new logic.  On the flip side, when faced with an IPR petition, the Patent Owner should search diligently for this information.  Perhaps an early discovery request in litigation is in order.  If a Petitioner drags its feet filing an IPR after the litigation starts, evidence found in discovery that the Petitioner knew of the patent years prior could help get a petition tossed. 

For assistance with IPRs or other post-grant proceedings, contact the experienced patent attorneys at Panitch Schwarze.