The PTAB Pendulum Swings: How IPR Denials are Reshaping Patent Owner and Challenger Strategies

Post-grant proceedings at the Patent Trial and Appeal Board (PTAB) are undergoing sweeping transformation. Over the past year, as other federal agencies have grown cautious to avoid further budget constraints and downsizing, the U.S. Patent & Trademark Office (USPTO) has charted a bold course—rewriting the rules and testing the bounds of its authority to effectively transform inter partes review (IPR) proceedings, once seen by some as a “death squad” for patent owners, in favor of patent owners.

Acting Director Coke Morgan Stewart’s recent tenure has ushered in a series of procedural changes that have provided patent owners with greater leverage and ways to avoid IPR institutions. Three of those have been particularly significant. 

1. First, the USPTO readopted the Fintiv factors[i] (i.e., factors that, when met, favor discretionary denial) but did so with a facelift. Now, the USPTO does not give as much weight, if at all, to the so-called Sotera stipulations that forfeit the invalidity arguments presented at the PTAB from being presented a second time in parallel litigation. Further, the USPTO now considers ITC investigations relevant parallel actions under Fintiv. Because ITC actions are much quicker than district court proceedings, this leans in favor of a discretionary denial.
2. Second, the USPTO announced a rule change that bifurcates discretionary and substantive institution briefing and decisions.
3. And third, Acting Director Stewart has taken this a step further by introducing an apparently new basis for discretionary denial of institution, invoking a “settled expectations” doctrine and discretionarily denying reviews of issued patents that remain unchallenged for a significant period of time. 

This wave of change has led to a marked increase in IPR institution denials—even in cases where the PTAB’s Fintiv factors might appear to favor institution. Recent statistics from Docket Navigator show that for IPR petitions filed since October 1, 2024, 72% have been denied while IPR petitions filed between January and August of that same year enjoyed a 61% institution rate, highlighting a dramatic shift that has effectively turned traditional IPR institution expectations on their head. As a result, patent owners—particularly in high-tech sectors—are experiencing an environment that is increasingly in their favor. 

The ongoing changes are reducing the overall volume of IPR proceedings, suggesting that the PTAB is evolving into a more neutral (or dare we say patent-friendly) forum. For both petitioners and patent owners, these shifts carry critical strategic implications.

Strategic Impacts for Petitioners and Patent Owners

Historically, IPR proceedings have been a go-to option for alleged patent infringers, offering a fast, cost-effective route to challenge patent validity. For example, IPR proceedings offer established and relatively short timelines (roughly 18 months from filing to a final decision), technically trained judges, and a lower burden of proof to invalidate patent claims. But the new PTAB climate is less welcoming to petitioners, to say the least: for the first time since the PTAB’s establishment, an IPR petition is more likely to be denied than it is to be granted. Since Director Stewart’s appointment, a solid majority of PTAB denials are discretionary (nearly 80%) as compared to denials on the merits. [ii] 

The duration a patent has been in force has emerged as a critical factor, cemented by Stewart’s “settled expectations” approach. As high-tech patent owners tend to assert older patents, this is a pivotal shift.

Acting Director Stewart’s decision in iRhythm Technologies, Inc. v. Welch Allyn, IPR2025-00363, -00374, -00376, -00377, -00378, Paper 10 (PTAB Jun. 6, 2025), set the wheels in motion, and now, “settled expectations” have become a de facto factor in institution decisions. Discretionary denials in recent cases, such as the oft-cited Dabico Airport Sols. Inc. v. AXA Power ApS, IPR2025-00408, Paper 21 at 2-3 (Director Jun. 18, 2025) reinforce this trend. In Dabico, Acting Director Stewart clarified that while there’s no exact rule for when expectations become settled, generally, the longer a patent has been in force, the stronger those expectations become for its owner. She also emphasized that actual notice of a patent or potential infringement is not required to establish settled expectations. 

Recent decisions further suggest that a six-year post-issuance period may draw the line, echoing the statutory look-back for patent damages under 35 U.S.C. § 286. See Kahoot! AS v. Interstellar, Inc., IPR2025-00696, Paper 12 at 2 (Director Rev. Dec. Jul. 31, 2025) (determining that a six-year post-issuance time frame is sufficient to “creat[e] strong settled expectations”); Google LLC v. Withrow Networks Inc., IPR2025-00775, Paper 10 at (Director Rev. Aug. 14, 2025) (determining that “the challenged patent [issued in 2020] has not been in force for a significant period of time” in order to enjoy strong settled expectations). For district court defendants eyeing IPR proceedings to challenge patents in force for six years or more, this is a potential game-changer—making the adoption of a strategic approach more vital than ever. 

Parties identifying as potential Petitioners should consider forgoing IPR filings on older patents in favor of more traditional routes, such as presenting an invalidity argument at the district court. Petitioning for a post-grant review only to be denied due to settled expectations will expend resources and may reveal your best invalidity argument with little hope of an institution. Challenge, and perhaps even target, newer patents with confidence, particularly where the Fintiv factors are in your favor (i.e., where parallel litigation is in early stages, the trial date in parallel litigations falls after the projected PTAB final written decision, where prior art included in the IPR proceedings does not overlap with prior art presented in parallel litigation). Where it is important to challenge a patent subject to settled expectations, explore the traditional declaratory judgment route, keeping in mind standing requirements and the risk of counterclaims. Where possible, monitor key competitors’ portfolios for recently issued patents and consider bringing a PGR action. With a PGR, not only are you able to ask the PTAB to consider more types of invalidity positions, you inherently will avoid the settled-expectations dagger since only patents issued within nine months are eligible. However, even with PGRs and younger patents, the Fintiv factors should always be considered since the PTAB continues to rely on those, and particularly earlier trial dates in parallel proceedings, to deny reviews. See, e.g., Samsung Electronics Co., Ltd. v. GenghisComm Holdings, LLC, IPR2025-00788-793 (Director Rev. Aug. 22, 2025) (denying institution even for patents aged three years or less based on timing of district court trial date).

Recommended Strategies to Act on the Impacts Addressed Above

Patent owners, and particularly those in the high-tech space, should consider how long the patents to assert have been in force and try to include older patents in any enforcement campaign. Where a potential patent for assertion is on the cusp of enjoying “settled expectations” (e.g., 4-5 years old), consider waiting another year or two before initiating an enforcement action, wherever possible. Further, patent owners should consider bringing ITC actions in parallel with district court actions in order to maximize the Fintiv factors to the fullest extent possible (i.e., shorten the ramp to a dispositive validity finding).

And all parties should keep in mind that the recent changes in administrations have brought profound changes to PTAB practice, meaning that Director Stewart’s recent reforms could leave as quickly as they came.

Conclusion

Parties navigating the shifting PTAB landscape should adopt an adaptive, creative approach. Understanding the new “settled expectations” doctrine and its impact on IPR strategy is essential for both petitioners and patent owners. The PTAB’s evolving procedures present new challenges and opportunities—making it more important than ever to engage advisors who can anticipate and respond to these changes with both experience and ingenuity. 

For those with questions about how to best leverage these strategies, the Mintz team stands ready to help. The next phase of post-grant practice is here, and those who learn to navigate it will be best positioned to protect their innovations and investments.

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