Since the iRhythm IPRs on which we blogged recently, there have been two more (actually, many more) decisions that are leaving petitioners scratching their heads. In Dabico, the Acting USPTO Director discretionarily denied an IPR petition because of “settled expectations,” the same rationale as in iRhythm. The Acting Director went further and criticized the petitioner for not making more arguments against discretionary denial than the patent owner advanced for discretionary denial. In Ericsson, the Acting Director discretionarily denied an IPR petition because the patent owner had dismissed the patent from the underlying litigation.

Petitioners must be feeling whipsawed. iRhythm and other decisions since then, such as Cambridge Industries, penalize petitioners for waiting to be sued on a patent before filing an IPR, even though the petitioner would have had no reason to worry about the patent before being sued. Yet Ericsson penalizes a petitioner for pursuing an IPR on a patent that the petitioner is (no longer) worried about. Petitioners effectively are encouraged to file more IPR petitions, against every potential threatening patent, rather than just the one(s) on which the petitioner is sued. The Acting Director also encourages petitioners to make third-party prior art submissions to the USPTO, creating more work for examiners, rather than reducing their workloads. Dabico piles on petitioners by penalizing them for not anticipating everything the Acting Director might say about discretionary denial, independent of any of the patent owner’s arguments. All the roads that the Acting Director is opening to decrease USPTO workload appear to lead to greater USPTO workload.

What are petitioners to do?