Not All Expirations [Re] Secured Settled Expectations for Petitioner

Acting USPTO Director Coke Morgan Stewart’s decision in Omnivision Technologies, Inc. v. Re Secured Networks, LLC, IPR2025-01019, Paper 14 (PTAB Oct. 10, 2025) serves as an illustration of circumstances in which a patent owner retains settled expectations, even when the contested patent has expired. Specifically, the Acting Director denied institution of an IPR where the challenged patent had been in force for seventeen years and expired three years prior to the petition filing. The Director found that the twenty years that had passed since the patent issued created “strong settled expectations,” and dismissed two arguments made by Petitioner. First, the Director found that petitioner’s filing of an action for declaratory judgment of noninfringement three months earlier undermined its claim that it did not expect enforcement of the patent. Second, the Director found petitioner’s argument that it believed it was licensed “unsupported.” The petitioner argued that it “naturally assumed it had become licensed” but based this assumption on a settlement the patent owner made more than a decade earlier that did not involve the petitioner.

Omnivision stands in contrast to the Acting Director’s decision in Globus Medical, Inc. v. Spinelogik, Inc., IPR2025-00225, -00226, Paper 9 (PTAB June 12, 2025), where the contested patent had also expired several years earlier. In Globus Medical, Petitioner argued that a patent’s expiration due to non-payment of fees established an expectation of non-enforcement, which the Acting Director found “persuasive.” This abandonment, along with the relatively little investment in the ongoing district court proceedings, led to the Acting Director deciding not to invoke discretionary denial discretion.

Takeaway

While the challenged patent being expired opens up the possibility for a petitioner to argue settled expectations, both petitioners and patent owners are advised to take into account relevant circumstances when arguing settled expectations.