This month, U.S. Patent and Trademark Office (USPTO) director John Squires formally adopted an earlier decision by former acting director Coke Morgan Stewart that softens the Patent Trial and Appeal Board's (PTAB) treatment of patent age and other factors against institution of inter partes review (IPR).

In Home Depot USA, Inc. v. H2 Intellect LLC, IPR2025-00480 (Paper 11, Sept. 4, 2025), Stewart rejected H2 Intellect's request for discretionary denial of an IPR petition brought by Home Depot, concluding that it was not warranted based on the totality of the record. While some factors favored denial, Stewart found those factors were outweighed by (seemingly new) countervailing considerations.

Stewart acknowledged overlapping concerns, noting that the district court trial is likely to occur before a final written decision issues in the IPR, raising risks of duplication, added cost and inconsistent outcomes. Stewart also found little evidence that the district court would stay its case if the IPR were instituted and recognized that the challenged patent has been in force for over 12 years.  Recently, these factors have been given strong weight in favor of discretionary denial of IPR based on “settled expectations” of the patent owner.

Stewart, however, found Home Depot’s arguments persuasive that the patent had not yet been commercialized or previously asserted in Home Depot’s retail hardware technology space. Notably, prior enforcement efforts within the consumer electronics space were deemed unhelpful to the patent owner on this issue. On balance, these commercial industry factors outweighed the typical litigation considerations that would support discretionary denial of IPR. 

Director Squires' decision to formally adopt the Home Depot decision as “informative” indicates that Squires agrees that retailers may not be automatically lumped together with traditional tech defendants in certain instances. The designation as informative may underscore the need for a more nuanced, fact-specific approach rather than a categorical one: if the patent owner's commercial or litigation conduct focuses on consumer electronics or traditional technology companies, the patent owner's settled expectations may be weakened when considering other distinct industries. More broadly, the decision could indicate PTAB's willingness to strongly consider commercial industry factors even in the face of issues concerning patent age, litigation timing or duplicate proceedings.

Takeaway: Director Squires' designation of the Home Depot decision as informative softens one of the only meaningful guideposts in PTAB's new approach to discretionary denial of IPRs — that patent age (commonly six years or older) creates settled expectations for the patent owner. Here, Squires approves of Stewart's acceptance of an IPR challenge to a 12-year-old patent because it has lived a narrow enforcement life. Lack of commercialization, licensing and assertions in the retail hardware space also appears to have reduced the strength of arguments that hardware retailers should have anticipated enforcement. Patent owners may no longer be able to rely on patent age to block IPR, even with other compelling litigation factors, when their enforcement expands into a new industry lane late in the game.