Unsettling Expectations: Stewart Broadens Denials Again

Sterne Kessler’s Richard Bemben spoke to Law360 on a recent ruling from the acting U.S. Patent and Trademark Office (USPTO) director, Coke Morgan Stewart, to discretionarily deny the petition in Dabico Airport Solutions Inc. et al. v. AXA Power APS (IPR2025-00408), applying settled expectations.

Bemben, who is co-chair of Sterne Kessler’s PTAB Practice, says that attorneys with filed PTAB petitions must now consider a different framework than when they originally filed their requests. He said attorneys should treat the decisions like any other intervening change in law, asking for additional briefing if necessary to address the acting director’s decisions.

The acting director also cited in her decision the part of patent law that only allows patent owners to collect damages for six years before an infringement complaint is filed. Bemben said, “I think that’s the analogy she’s trying to draw there,” adding that it may not be a strict limit. “It’s sending a strong message that you better explain why the Patent Office should use its resources if you do. That should be front and center in your opposition if you’re the petitioner.”

While patent owner AXA Power had not argued settled expectations when asking for a discretionary denial, Stewart stated that Dabico should have addressed it.

“It’s definitely a different dynamic,” Bemben remarked, adding that past practice has been for a patent owner to defend why it should not have to face the board and this decision turns that around.