Dabico Airport Sols. Inc. v. AXA Power ApS

Informative decision only: persuasive authority, not binding precedent. When a challenged patent has been in force almost eight years and the petitioner offers no persuasive reasoning why inter partes review is an appropriate use of Office resources, the Director may deny institution under 35 U.S.C. § 314(a) to protect the patent owner's settled expectations. There is no bright-line rule on when expectations become settled, but in general the longer a patent has been in force, the more settled expectations should be, and actual notice of the patent or of possible infringement is not necessary. No prior precedent directly addressed this issue in the text; the decision cites no earlier Board decision and relies on the Office's interim processes memorandum and FAQs. For petitioners, patent age is now a weighty discretionary factor, and a petition against a patent in force for years must affirmatively explain why review is a proper use of Office resources, or the Director may deny even if the patent owner's § 325(d) arguments fail. For patent owners, a request for discretionary denial can succeed on settled expectations arising from the patent's time in force, without showing actual notice or any other independent ground. The decision cites no Federal Circuit, CCPA or Supreme Court authority; it analogizes to the six-year limit of 35 U.S.C. § 286 only by a cf. cite and relies on 35 U.S.C. §§ 122 and 41(i) for public notice. LEGAL TEST OR STANDARD: No enumerated factors. The Director applies a holistic assessment of the totality of the evidence and arguments, weighing considerations for and against discretionary denial under 35 U.S.C. § 314(a). The decision states there is "no bright-line rule on when expectations become settled," but "in general, the longer the patent has been in force, the more settled expectations should be." TRIGGERING FACTS: The challenged patent had been in force almost eight years. The petitioner, in its opposition to the discretionary denial request, gave no persuasive reasoning why inter partes review was an appropriate use of Office resources. The patent owner's 35 U.S.C. § 325(d) arguments were unpersuasive, yet the settled expectations considerations still outweighed the considerations against denial. Actual notice of the patent or of possible infringement was not required. KEY QUOTE: "Petitioner does not provide any persuasive reasoning why an inter partes review is an appropriate use of Office resources." (Paper 21, p. 3) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: When challenging a patent that has been in force for years, use the opposition to the discretionary denial request to explain affirmatively why review is an appropriate use of Office resources and to identify every reason not to exercise discretion to deny. Silence on settled expectations can be fatal even when the patent owner's other arguments, such as § 325(d), fail.