Forghany Explains First PTAB Institutions Under Director Squires to WIPR

Ehsun noted two themes from the 13 petitions that may impact outcomes. 

“Theme #1: Sotera and Sotera-Plus stipulations remain key for petitions involving co-pending litigation.

By December 11, Director Squires had referred a total of 84 petitions for merits consideration, 75 of which challenged patents involved in co-pending litigation. Of those 75 petitions that were referred for merits consideration, the petitioner relied upon a Sotera or Sotera-Plus stipulation in 58 of those petitions (77%). 

What’s more, only 22 of these 58 petitions relied on a Sotera-Plus stipulation (ie, petitioner waived system-art combinations corresponding to IPR references); the remaining 36 involved just a Sotera stipulation.

This relatively high percentage of merits-referred petitions with only a Sotera stipulation is somewhat inconsistent with Acting Director Stewart’s and Director Squires’s emphasis on including Sotera-Plus stipulations.

Does this data suggest that Director Squires has changed his view on the necessity of Sotera-Plus stipulations? Or does this data simply reflect a temporary transitional period before his proposed rules requiring Sotera-Plus stipulations take effect?

Unfortunately, Director Squires’ institution decisions do not provide any further clarity on these questions. As shown below, Director Squires has instituted trial for 13 petitions, 10 of which challenged patents involved in a co-pending litigation. Of those 10 petitions, the petitioner relied on a Sotera or Sotera-Plus stipulation in seven of them. 

But once again, only two of these seven instituted petitions relied on a Sotera-Plus stipulation; the remaining five petitions involved just a Sotera stipulation. So it remains unclear whether Director Squires has changed his view on the necessity of Sotera-Plus stipulations….”

“Theme #2: Settled expectations is a critical factor but can be overcome with the right evidence.

In every one of the instituted petitions, the petitioner included arguments addressing “settled expectations”. For 10 of the 13 instituted petitions, the patents at issue were less than six years old, thereby hampering the patent owners’ ability to make persuasive settled expectations arguments.

Director Squires’ instituted petitions therefore weighed heavily toward patents that were less than six years old, and in many cases, significantly younger. This is largely consistent with the practice established under Acting Director Stewart.

Notably, three of the 13 instituted petitions challenged patents that were six or more years old. These three instituted petitions demonstrate that “settled expectations” arguments can be overcome with the right evidence.

The petitioners successfully instituted trial on older patents by drawing attention to intervening events that disrupted any expectation that the patent owner would enforce the challenged patent—eg, the patent owner had allowed the challenged patent to lapse for roughly four years (IPR2025-01215) or had abandoned similar claims from a related patent in re-examination proceedings (-01171). 

Thus, petitioners seeking to challenge older patents can overcome “settled expectations” by identifying similar evidence: lapsed patent rights and successful patentability challenges involving claims of related patents.”

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