Recent decisions by the Acting USPTO Director have left petitioners uncertain about filing Inter Partes Reviews (IPRs). The denial of IPR petitions in cases like Dabico and Ericsson has highlighted a lack of consistency in the criteria for discretionary denial. Petitioners are penalized for delaying IPR filings until after being sued, while also facing challenges when filing on patents no longer of concern. The Director has increased the burden on petitioners and the USPTO, compelling more work from both parties, complicating the overall process of patent challenges.
The Acting USPTO Director discretionarily denied an IPR petition in Dabico, citing "settled expectations," similar to the rationale used in iRhythm.
In Ericsson, the denial of the IPR petition was based on the patent owner's prior dismissal of the patent from ongoing litigation.
Petitioners are penalized in the current landscape for waiting to be sued before filing an IPR, as seen in the iRhythm and Cambridge Industries decisions.
The Acting Director's decisions encourage petitioners to file more IPR petitions against potentially threatening patents, increasing workload for the USPTO.
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