USPTO Director Refuses iRhythm’s Bid to Review Decision Scrapping IPRs Based on ‘Settled Expectations’

USPTO Director Refuses iRhythm’s Bid to Review Decision Scrapping IPRs Based on ‘Settled Expectations’

Arguing that Welch Allyn allowed its patents to lie dormant between 2012 and 2024, iRhythm filed a petition for Director Review in July.

USPTO Director Upholds Discretionary Denial to iRhythm

The US Patent and Trademark Office (USPTO) Director Coke Morgan Stewart has denied iRhythm Technologies, Inc.’s request for director review of her own decision to discretionarily refuse institution of iRhythm’s petitions for inter partes review challenging a number of patents owned by Welch Allyn, Inc.

Patent Owner’s ‘Settled Expectations’ Prevail

iRhythm versus Welch Allyn’s Director Discretionary Denial was the first to explain Stewart’s view that a patent owner’s ‘settled expectations’ generally outweigh other discretionary denial factors when a patent has been in force for over six years. Stewart refused institution of five IPRs brought by iRhythm against Welch Allyn in the June 6 decision, finding that while many factors weighed against denial, failure on the part of the petitioner to challenge the patent sooner and the ‘settled expectations’ of the patent owner superseded those factors.

Arguing that Welch Allyn allowed its patents to lie dormant between 2012 and 2024, iRhythm filed a petition for Director Review in July. The petition reportedly said, “It never commercialized nor asserted them and now seeks simply to tax the commercial market. It watched iRhythm build through millions of dollars of investment.”

iRhythm also reportedly argued that Stewart’s rationale “violates the Director’s own binding precedent in NHK [Spring],” a 2020 decision that [former USPTO] Director Iancu termed as precedential and remains binding authority.

Stewart made it clear that the Office wants to encourage early validity challenges in remarks made in June at the Intellectual Property Business Congress Global 2025. IPWatchdog Founder and CEO Gene Quinn reportedly wrote, “Filing an IPR many years after a patent has been granted should not be the primary mechanism for addressing patent quality, or correcting errors. The Office needs to focus on important cases, Stewart explained, and patents that have been in force 10, 12, 15 years or more may not be the best cases for the Office to be instituting.”