A patent in force almost eight years carries settled expectations that can defeat an inter partes review petition

2025-06-18PTAB

Dabico Airport Solutions Inc. v. AXA Power ApS, IPR2025-00408, Paper 21 (June 18, 2025) (Coke Morgan Stewart, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office), granting the patent owner's request for discretionary denial of institution of review of United States Patent No. 9,771,169 B2

Acting Director Coke Morgan Stewart denied a petition for inter partes review of United States Patent No. 9,771,169, AXA Power's patent on a preconditioned air unit for parked aircraft, which issued in September 2017. The decision applies the interim process announced in her memorandum of March 26, 2025, under which the Director, consulting at least three judges of the Patent Trial and Appeal Board, decides discretionary denial on briefs from both sides. One listed factor is the "settled expectations of the parties, such as the length of time the claims have been in force." The Acting Director found that "the challenged patent has been in force almost eight years, creating settled expectations." She stated that "there is no bright-line rule on when expectations become settled," that expectations grow more settled the longer a patent is in force, and compared the six-year limit on recovering damages in Section 286 of Title 35 of the United States Code. Because issued patents and published applications are public, "actual notice of a patent or of possible infringement is not necessary to create settled expectations." The petitioner did "not provide any persuasive reasoning" why review was a proper use of the resources of the United States Patent and Trademark Office. The decision rejected the patent owner's Section 325(d) arguments and denied institution under Section 314(a).

What it changesThe age of the patent is now an argument against review, and the clock runs from issuance rather than from the day the patent is asserted. A company shipping artificial intelligence or software products that faces a software patent issued six or more years ago should assume the Board may decline to hear its invalidity case and should build that case, art and expert together, for district court from the first week of the dispute. Competitor patent watching becomes a timing question: a patent that matters to the roadmap should be challenged while it is young, before settled expectations accrue, rather than held in reserve until assertion. For patent owners the calculus runs the other way. An older parent patent is now harder to attack at the Office than a newly issued continuation, so assertion campaigns should lead with the oldest claims that read on the product. The decision is a single interim-process ruling, and it disclaims any bright line.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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