Discretionary Denial of IPR Based Solely on Petitioner’s Prior Knowledge of a Patent
Recently a series of inter partes reviews (IPRs) in iRhythm Tech. v. Welch Allyn were discretionarily denied by Acting USPTO Director Coke Morgan Stewart. IPR2025-00363, Paper 10 (June 6, 2025). The sole reason given for the denial was that one of the four patents being challenged issued in 2012, and the petitioner iRhythm was aware of the patent at least as early 2013, since iRhythm had cited it in an IDS filed that year in one of its applications.
This is a big step in the USPTO’s power to discretionarily deny the institution of post-grant proceedings (IPRs and post-grant reviews (PGRs)) relating to issued patents. This new procedure, announced in a memo issued in late March (discussed in my earlier piece), is intended to maintain efficiency in PTAB proceedings, and to reduce pendency in ex parte appeals.
Among the memo’s seven relevant considerations regarding discretionary denial of proceedings was “settled expectations of the parties, such as the length of time the claims have been in force.” This was the factor that Acting Director Stewart seized upon in denying the institution of iRhythm’s IPRs. The denial was made despite 1) that the challenged patents included a patent issued as recently as 2018; 2) that Welch Allyn had failed to sue iRhythm when the latter had issued products in 2012, 2017, and 2021; 3) that Welch Allyn had only recently filed a patent infringement action against iRhythm (Case No. 1:2024cv00224, filed in the District Court of Delaware on Feb. 20, 2024); and 4) that the IPRs would be completed before the scheduled trial date in that infringement action.
If this sort of denial becomes the accepted practice, it will radically change the landscape regarding the use of post-grant proceedings to challenge patents, especially patents that become a part of an infringement action only years after issuance. But the denial is discretionary (and not appealable – see 35 USC 314(d) and 35 USC 324(e)), and with discretion that is not reviewable there is always the risk of unequal and even arbitrary treatment.
The attorneys at Renner Otto strive to be authorities in all matters concerning the ever-evolving landscape of Intellectual Property; however, the information provided on our website is not intended to be legal advice, nor does it create an attorney-client relationship.
Contact us for more information or for a complimentary consultation.