Amicus Curiae Brief — Google LLC, Petitioner v. VirtaMove, Corp., et al.

No. 25-1230

In the

Supreme Court of the United States

GOOGLE LLC,

Petitioner,

v.

VIRTAMOVE, CORP., et al.,

Respondents.

On Petition for a Writ of Certiorari to the United

States Court of A ppeals for the Federal Circuit

BRIEF OF US*MADE, THE ALLIANCE FOR

AUTOMOTIVE INNOVATION, THE HIGH TECH

INVENTORS ALLIANCE, THE COMPUTER &

COMMUNICATIONS INDUSTRY ASSOCIATION,

THE SOFTWARE & INFORMATION INDUSTRY

ASSOCIATION, AND NATIONAL RETAIL

FEDERATION AS AMICI CURIAE

IN SUPPORT OF PETITIONER

Joseph Matal

Counsel of Record

Clear IP, LLC

888 16th Street, NW Suite 300

Washington, DC 20006

(202) 654-4500

joseph.matal@clearpatents.com

Counsel for Amici Curiae

May 29, 2026

393449

(800) 274-3321 • (800) 359-6859

i

QUESTION PRESENTED

T he A mer ic a Invent s Ac t (A I A) aut hor i z es

administrative proceedings for the review of the validity

of issued patents. The Act authorizes post-grant review, in

which a patent may be challenged on all validity grounds

during the period between the patent’s issuance and “the

date that is 9 months after th[at] date.” 35 U.S.C. § 321(c).

It authorizes inter partes review, in which a patent may be

challenged on printed prior art grounds during the period

“after the later of . . . the date that is 9 months after the

grant of a patent” or “the termination of [an instituted]

post-grant review.” Id. § 311(c). The Act prohibits the

filing of a petition for inter partes review “more than 1

year after the date on which [the challenger] is served

with a complaint alleging infringement of the patent.”

Id. § 315(b). And the Act estops further challenges to a

patent by either the petitioner in a completed review or

its “real party in interest or privy.” Id. §§ 315(e), 325(e).

The Act also states that a review “may not . . . be

instituted unless” these conditions are met, id. §§ 314(a),

324(a), and it provides that the decision “whether to

institute a . . . review” is “final and nonappealable.” Id.

§§ 314(d), 324(e).

The question presented by this case is whether

the latter two provisions render all the other statutory

provisions described here merely advisory and optional

for the agency to follow—that is, may the Patent Office

redefine the temporal scope of the patents that may be

challenged in AIA proceedings, may it impose a shorter

filing deadline than that provided by § 315(b), and may it

apply an estoppel to third parties that are unrelated to

the petitioner in the completed proceeding?

ii

TABLE OF CONTENTS

Page

QUESTION PRESENTED . . . . . . . . . . . . . . . . . . . . . . . . i

TABLE OF CONTENTS . . . . . . . . . . . . . . . . . . . . . . . . . ii

TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . . iv

INTEREST OF AMICI CURIAE . . . . . . . . . . . . . . . . . 1

SUMMARY OF ARGUMENT . . . . . . . . . . . . . . . . . . . . 2

ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

I.

T h e U S P T O ’s a c t i o n s v i o l a t e i t s

authorizing statute and are dismantling

the congressionally enacted system of

patent validity review . . . . . . . . . . . . . . . . . . . . . . 4

II. PTA B petitioners—and the public—

have legitimate interests in AIA reviews

that are entitled to legal protection . . . . . . . . . . 18

III. The statutory framework for patentvalidity reviews is not merely advisory or

optional for the agency to follow . . . . . . . . . . . . . 21

A. The Federal Circuit’s interpretation

would wreak havoc with other federal

statutes . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

iii

Table of Contents

Page

B. Int er par t es rev iew ’s st atut or y

safety valve confirms that broad

“ re sou rce s” d i sc ret ion wa s not

intended by Congress . . . . . . . . . . . . . . . . . 26

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27

iv

TABLE OF CITED AUTHORITIES

Page

Cases

Apple Inc. v. Gesture Technology Partners, LLC,

127 F.4th 364 (Fed. Cir. 2025) . . . . . . . . . . . . . . . . . . . 5

Arista Networks, Inc. v. Cisco Systems, Inc.,

908 F.3d 792 (Fed. Cir. 2018) . . . . . . . . . . . . . . . . . . . 15

Cochrane v. Deener,

94 U.S. 780 (1876) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20

Cuozzo Speed Techs., LLC v. Lee,

579 U.S. 261 (2016) . . . . . . . . . . . . . . . . . . . . . . . . . . . 21

Hyosung TNS Inc. v. ITC,

926 F.3d 1353 (Fed. Cir. 2019) . . . . . . . . . . . . . . . . . . 13

In re Motorola Sols.,

159 F.4th 30 (Fed. Cir. 2025) . . . . . . . . . . . . . . . . . . . 20

Minerva Surgical, Inc. v. Hologic, Inc.,

594 U.S. 559 (2021) . . . . . . . . . . . . . . . . . . . . . . . . . . . 15

Mylan Labs. Ltd. v. Janssen Pharm., N.V.,

989 F.3d 1375 (Fed. Cir. 2021) . . . . . . . . . . . . . . . 21-23

Parke-Davis & Co. v. H. K. Mulford Co.,

189 F. 95 (C.C.S.D.N.Y. 1911) . . . . . . . . . . . . . . . . . . . 20

Richards v. Jefferson County, Ala.,

517 U.S. 793 (1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . 14

v

Cited Authorities

Page

Thryv, Inc v. Click-To-Call Techs., LP,

590 U.S. 45 (2020) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21

Wi-Fi One, LLC v. Broadcom Corp.,

887 F.3d 1329 (Fed. Cir. 2018) . . . . . . . . . . . . . . . . . . 14

PTAB Decisions

Apple Inc. v. Fintiv, Inc.,

IPR2020-00019 (Mar. 20, 2020) . . . . . . . . . . . . . . . . . 11

Charter Commc’ns, Inc. v. Adaptive Spectrum

and Signal Alignment, Inc.,

IPR2024-01379 (Apr. 17, 2025) . . . . . . . . . . . . . . . . . 12

Dabico Airport Solutions Inc v. AXA Power ApS,

IPR2025-0040 (Jun. 18, 2025) . . . . . . . . . . . . . . . . . 4, 5

Dell Inc. v. Universal Connectivity Techs., Inc.,

IPR2024-01479, -01478 (Apr. 7, 2025) . . . . . . . . . . . . 12

Intel Corp. v. Proxense LLC,

IPR2025-00327 (Jun. 26, 2025) . . . . . . . . . . . . . . . . . . 6

Intel Corp. v. VLSI Tech. LLC,

IPR2021-01064 (May 12, 2023) . . . . . . . . . . . . . . . . . 19

Kahoot! AS v. Interstellar Inc.,

IPR2025-00696 (Jul. 31, 2025) . . . . . . . . . . . . . . . . . . . 5

Motorola Solutions, Inc. v. Stellar, LLC,

IPR2024-01205 (Mar. 28, 2025) . . . . . . . . . . . . . . . . 12

vi

Cited Authorities

Page

Patent Quality Assurance, LLC v. VLSI Tech. LLC,

IPR2021-01229 (June 13, 2023) . . . . . . . . . . . . . . . . . 19

Sotera Wireless, Inc. v. Masimo Corp.,

IPR2020-01019 (Dec. 1, 2020) . . . . . . . . . . . . . . . . . . 11

Tesla, Inc. v. Intellectual Ventures II LLC,

IPR2025-00217 (June 13, 2025) . . . . . . . . . . . . . . . . . . 6

Verizon Connect Inc v. Omega Patents LLC,

IPR2023-01162 (Jun. 3, 2025) . . . . . . . . . . . . . . . . . . 15

Verizon Connect Inc. v. Omega Patents LLC,

IPR2023-01162 (May 2, 2025) . . . . . . . . . . . . . . . . . . 15

Statutes, Rules and Regulations

7 U.S.C § 2262a(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24

10 U.S.C. § 1094(a)(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23

11 U.S.C. § 747 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

12 U.S.C. § 1831a . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23

12 U.S.C. § 5103(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23

16 U.S.C. § 5503(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

17 U.S.C § 1504(b)(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

17 U.S.C § 1505(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

vii

Cited Authorities

Page

28 U.S.C. § 2253(c) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24

28 U.S.C. § 2253(c)(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24

35 U.S.C. § 119(e)(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

35 U.S.C. § 154(a)(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

35 U.S.C. § 286 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

35 U.S.C. § 311(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26

35 U.S.C. § 311(c) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2, 4

35 U.S.C. § 314(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21

35 U.S.C. § 314(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12

35 U.S.C. § 315(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10, 11

35 U.S.C. § 315(e) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14

35 U.S.C. § 316(a)(11) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12

35 U.S.C . § 321(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26

35 U.S.C. § 321(c) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2, 4

35 U.S.C. § 325(e) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14

42 U.S.C. § 1490j . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24

viii

Cited Authorities

Page

46 U.S.C. § 4503(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

46 U.S.C. § 40901(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

46 U.S.C. § 55103(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

47 U.S.C. § 272(a)(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23

47 U.S.C. § 336(f)(7) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23

49 U.S.C. § 30112(a)(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . 23

52 U.S.C. § 30114(c)(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . 24

37 C.F.R. § 42.107(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12

Fed. Prac. & Proc. § 4448 . . . . . . . . . . . . . . . . . . . . . . . . 14

Pub. L. No. 112-29, § 6(c)(2)(B). . . . . . . . . . . . . . . . . . . . 27

Supreme Court Rule 37.2 . . . . . . . . . . . . . . . . . . . . . . . . . 1

Legislative Materials

157 Cong. Rec. S5429 (daily ed. Sep. 8, 2011) . . . . . . . . 11

H.R. Rep. No. 96-1307, 96th Cong. (1980) . . . . . . . . . . . 21

S.23, America Invents Act, 112th Congress (2011) . . . 10

Weekly Compilation of Presidential Documents,

President Jimmy Carter, Dec. 12, 1980,

Vol. 16, No. 501 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21

ix

Cited Authorities

Page

Other Authorities

Adam Lidgett, Industry Groups Want Trump

Admin To Stop PTAB Changes, Law360, Nov. 4,

2025 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19

Appendix of Denied PTAB Petitions . . . . . . . . . . . . . . . . 5

Boetticher, E., Unsettling Expectations: Avoiding

Discretionary Denial of IPR Petitions, Sep. 9,

2025 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6

Britain Eakin, Intel Hit With $949M Verdict In

Latest VLSI Patent Fight, Law360, Nov. 5,

2022 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18-19

Dani Kass, What Judges Want You to Know:

Litigate Smarter, Law360, Feb. 11, 2025 . . . . . . . . . 20

DeFosse, J., et al., Data Undermines USPTO’s

“Settled Expectations” Doctrine, Law360, Aug.

29, 2025 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7

Dennis Crouch, Borrowing from the Board: District

Court Obviousness in the Post-IPR Era, May 21,

2026 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17

Dennis Crouch, Inter Partes Review in 2026, May

24, 2026 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17

x

Cited Authorities

Page

Director Institution of AIA Trial Proceedings,

October 17, 2025 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8

Jones, F., Unpacking the PTAB’s Patent Age Denial

Doctrine Data, Aug. 29, 2025 . . . . . . . . . . . . . . . . . . . . 5

PTAB Parallel Litigation Study June 2022 . . . . . . . . . 16

PTAB Trial Statistics: 2025 End of Year Outcome

Roundup . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16, 18

Reuters, Intel loses U.S. patent trial, ordered to pay

$2.18 billion to VLSI Tech, Mar. 2, 2021 . . . . . . . . . . 18

Ryan Davis, Stewart Says New Policies Seek

Fairness for Patent Owners, Law360, Sep. 15,

2025 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7

Theresa Schliep, PTAB Petitions Continue To

Plummet As Reexams Surge, Law360, April 17,

2026 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17

Theresa Schliep, Squires Snubs 10 IPRs While 4

Pass Muster In Latest Order, Law360, April 29,

2026 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16

Unified Patents, Patent Dispute Report: Q3 in

Review, Oct. 9, 2025 . . . . . . . . . . . . . . . . . . . . . . . . . . . 13

xi

Cited Authorities

Page

USITC, Section 337 Statistics: Average Length of

Investigations (updated Feb. 3, 2026) . . . . . . . . . . . . 13

USITC, Section 337 Statistics: Number of New,

Completed, and Active Investigations By Fiscal

Year (updated Feb. 3, 2026) . . . . . . . . . . . . . . . . . . . . 13

USPTO Brief in Federal Circuit Appeal No. 2025-1482 . . . 26

USPTO, Interim Procedure for Discretionary

Denials in AIA Post-Grant Proceedings With

Parallel District Court Litigation, Jun. 21, 2022 . . . 11

Wilson Sonsini, 2023 PTAB Year in Review . . . . . . . . .16

1

INTEREST OF AMICI CURIAE

The U.S. Manufacturers Association for Development

and Enterprise is a nonprofit association representing

companies manufacturing diverse goods in the United

States.1

The Alliance for Automotive Innovation represents

the full automotive industry, including the manufacturers

producing most vehicles sold in the U.S. and equipment

suppliers.

The High Tech Inventors Alliance represents leading

technology providers and includes some of the most

innovative companies in the world.

T he Comput er & Com mu n ic at ions Indust r y

Association is an international, not-for-profit trade

association representing a broad cross section of

communications and technology firms.

The Software & Information Industry Association is

the principal trade association for the software and digital

information industries.

National Retail Federation is the world’s largest

retail trade association, representing retailers of all sizes,

formats, and channels of distribution and spanning all

industries.

1. Per this Court’s Rule 37.2, counsel for the parties were

timely notified of amici’s intention to file this brief. No counsel for

a party wrote any part of this brief and no one other than amici

made a monetary contribution in relation to the brief. Although

Google is a member of several amici, it did not participate in the

decision to file this brief.

2

Amici’s member companies are frequent targets of

assertions of improperly issued patents and make routine

use of the post-issuance review proceedings authorized

by the America Invents Act.

SUMMARY OF ARGUMENT

The USPTO makes a breathtaking claim of authority:

that it can literally rewrite the terms of its enabling

statute. Post grant review is available by law for patents

during the first “9 months after” the “grant of the

patent,” 35 U.S.C. § 321(c), and inter partes review is

available “after the later of . . . 9 months after the grant”

or “termination of [a] post-grant review.” Id. § 311(c).

Patents last for 20 years and are enforceable for another

six years after they expire. Since Congress enacted the

America Invents Act in 2011, the USPTO had understood

that inter partes review is available for the entirety of

this period of enforceability (“after” the availability of

post-grant review).

In June 2025, however, the USPTO announced a

new rule that six years after the grant of a patent, the

patent owner acquires “settled expectations” that prevent

anyone from challenging the patent in an inter partes

review. In the ensuing months, the agency applied this

rule retroactively to reject virtually every single petition

before it that sought to challenge a patent that was more

than five years old. An appendix linked to this brief lists

the 201 inter partes review petitions that the USPTO

expressly denied on “settled expectations” grounds

without considering the merits. 2

2. Available at https://perma.cc/87GY-NLXK.

3

The USPTO continues to apply this rule today, albeit

without explaining its actions. Several months ago, in an

admitted attempt to evade judicial review, the agency

switched to a practice of summarily denying inter partes

and post-grant review petitions, without providing any

explanation at all for its decisions.

“Settled expectations” is not the only way in which the

USPTO has abused the supposed “unreviewability” of its

institution decisions and policies. It has invoked the same

immunity from review to shorten a statutory deadline that

was the subject of intra-house congressional negotiations

on the AIA; to extend estoppel to third parties that are

unrelated to (and unaware of) prior proceedings—far

beyond statutory and due-process privity limits; and to

broaden the assignor-estoppel defense that this Court

recently narrowed.

The USPTO’s actions are deeply prejudicial to amici’s

members, who face billions of dollars in potential liability

for asserted patents that the agency improperly issued—

and now refuses to correct. It was Congress itself that

decided that the opportunity to raise invalidity defenses

during infringement litigation is not enough—that a more

predictable, technically expert validity review is needed,

particularly when critical technologies are at stake.

The lower court’s decision would afford the USPTO

discretion to ignore the statutory framework—all

based on a statute that never actually uses the word

“discretion.” The decision would also unsettle longstanding

understandings of the many other federal statutes that

use the same formulation the Federal Circuit now

interprets as the source of boundless discretion. And

4

most fundamentally, when Congress enacts a reticulated

statutory scheme—with limited safety valves—it cannot

plausibly be understood to have intended that these

statutory standards and rules would be treated as merely

optional for the agency to follow.

ARGUMENT

I.

The USPTO’s actions violate its authorizing statute

and are dismantling the congressionally enacted

system of patent validity review.

It would be hard to overstate the violence that the

USPTO’s leadership has done to America Invents Act

patent reviews during the past year.

On June 18, 2025, the agency announced and began

applying the rule at issue in this case: that once a certain

number of years have passed since a patent has issued,

the patent owner acquires “settled expectations” that the

patent’s validity cannot be challenged in AIA proceedings.3

A patent’s term runs twenty years from its filing

date4 and a patent can be enforced for up to six years

after it has expired.5 Prior to the USPTO’s adoption of the

“settled expectations” rule, the agency had followed the

statutory framework:6 it allowed patents to be challenged

3. See Dabico Airport Solutions Inc v. AXA Power ApS,

IPR2025-00408 (Jun. 18, 2025).

4. See 35 U.S.C. § 154(a)(2).

5. See 35 U.S.C. § 286.

6. See 35 U.S.C. §§ 321(c), 311(c).

5

in post-grant reviews during the first nine months after

their issuance, and in inter partes reviews throughout the

remainder of the time that the patent can be enforced.7

The USPTO has not stated how old a patent must be

before “settled expectations” attach, 8 but in practice, the

rule appears to be six years. In the months after the rule

was announced, the USPTO denied 201 petitions for inter

partes review based on “settled expectations.” 9 Amici

are aware of only a handful of cases in which a petition

challenging a patent that was more than five years old

was able to overcome this new bar.10

7. See USP TO, P TA B T r ials: Inter Pa r tes Rev iew,

available at https://perma.cc/9KGM-3UTL; Apple Inc. v. Gesture

Technology Partners, LLC, 127 F.4th 364, 368-69 (Fed. Cir. 2025)

(affirming that “the Board has jurisdiction over [inter partes

reviews] concerning expired patents”).

8. See Dabico, supra n.3 (“Although there is no bright-line

rule on when expectations become settled, in general, the longer

the patent has been in force, the more settled expectations should

be.”).

9. See Appendix of Denied PTAB Petitions, available at

https://perma.cc/87GY-NLXK.

10. See Jones, F., Unpacking the PTAB’s Patent Age Denial

Doctrine Data, Aug. 29, 2025, available at https://perma.cc/M65XUCW9 (“For patents six years and older, the vast majority has

settled expectations supporting denial. Conversely, for patents

four years and younger, almost all supported referral for an

institution decision. For five-year-old patents, the decisions

remain split.”) (analyzing 249 petition decisions). Thus the rule is

sometimes arbitrarily applied to deny review of patents that are

less than six years old. See, e.g., Kahoot! AS v. Interstellar Inc.,

IPR2025-00696 (Jul. 31, 2025).

6

In Intel Corp. v. Proxense LLC,11 the USPTO provided

“guidance” that older patents can be reviewed despite

“settled expectations” if the petitioner either identifies

“a significant change in the law” or shows that the patent

was never “commercialized” or “licensed.” 12 As one

commentator has noted, however, these exceptions “have

proven to be largely ineffective in practice.”13 The latter

exemption appears to have been successfully invoked only

three times,14 and the “change in the law” proviso even

less15 —amici are not aware of any case in which it has

been applied to allow PTAB review of a utility patent that

is more than five years old.16

11. IPR2025-00327 (Jun. 26, 2025).

12. Id.

13. Boetticher, E., Unsettling Expectations: Avoiding

Discretionary Denial of IPR Petitions, Sep. 9, 2025, available at

https://perma.cc/AQ9E-VV6J.

14. See id.

15. See id. (“ To date, no petitioner has successfully

applied [the ‘change in the law’ exception] to overcome settled

expectations.”).

16. Similarly, although the USPTO has designated as

“informative” its decision in Tesla, Inc. v. Intellectual Ventures

II LLC, IPR2025-00217 (June 13, 2025), which allowed “settled

expectations” to be overcome by a showing that the patent

owner had asserted “a large number of patents from different

families”—a common scenario in patent litigation—few if

any additional petitioners appear to have benefited from this

administrative grace.

7

Thus as a practical matter, under the USPTO’s

“settled expectations” rule, a patent’s validity cannot be

contested in an AIA review once the patent is six years old.

Notably, the average age of all the patents that have been

challenged in an inter partes review in the nearly decade

and a half since the AIA was enacted is 6.7 years.17 About

half of these challenged patents would have been immune

from review under the USPTO’s new rule.18

The 201 inter partes review petitions that were

expressly rejected by the USPTO based on “settled

expectations” were all denied between June 18, 2025,

and October 17, 2025. After this period, the USPTO

did not suspend its application of this rule—instead,

it simply stopped providing any explanation of its

decisions to reject AIA petitions. In September 2025, in

response to court challenges to the legal justifications

for the USPTO’s new rules, agency officials stated

that they “could just issue one-word decisions denying

review without explanation.”19 In a subsequent policy

memorandum, the USPTO Director followed through

on this threat: he announced that he will personally

decide each PTAB petition, and if he “determines

that institution is not appropriate, whether based on

discretionary considerations, the merits, or other non17. See DeFosse, J., Data Undermines USPTO’s “Settled

Expectations” Doctrine, Law360, Aug. 29, 2025.

18. See id.

19. Ryan Davis, Stewart Says New Policies Seek Fairness

for Patent Owners, Law360, Sep. 15, 2025.

8

discretionary considerations, the Director will issue a

summary notice denying institution.” 20

The first such summary denials were issued on

October 31, 2025. On that date, 13 separate petitions

for inter partes review—each of which included up to

14,000 words of legal analysis and was accompanied by a

$23,750 nonrefundable filing fee—were summarily denied

in a notice that simply listed the docket numbers of the

petitions. Here is what these notices look like:

20. Director Institution of AIA Trial Proceedings, October

17, 2025, available at https://perma.cc/DQ5J-X5G4.

9

10

Since this initial batch of summary denials, the

USPTO has summarily denied an additional 302 petitions

for inter partes and post-grant review for what it has

designated as “discretionary” reasons. No further

explanation has been provided by the agency as to why it

denied these petitions.

In addition to “settled expectations,” the USPTO has

invoked the unreviewability of its decisions to impose

several other procedural rules in the past year that

override the AIA’s statutory framework and make review

proceedings inaccessible for broad classes of litigation

defendants.

Section 315(b) of the Patent Act sets a one-year

deadline for seeking patent validity review at the PTAB

once infringement litigation has commenced: “An inter

partes review may not be instituted if the petition . . .

is filed more than 1 year after the date on which the

petitioner, real party in interest, or privy of the petitioner

is served with a complaint alleging infringement of the

patent.” 35 U.S.C. § 315(b).

Congress specifically chose a one-year deadline to

ensure that litigation defendants would have a reasonable

opportunity to seek review once they have been sued—

indeed, this time limit was one of the last issues to be

resolved in the final negotiations on the AIA. The bill that

first passed the Senate in 2011 would have set this deadline

at six months. 21 The House, however, extended the period

to one year. The Senate then acceded to this change, and

21. See S.23, America Invents Act, 112th Congress (2011),

§ 5 (proposed 35 U.S.C. § 315(b)).

11

it was codified in the final law. When the bill returned to

the Senate, the bill managers explained why they agreed

to the change: they concluded that it was “appropriate to

extend the section 315(b) deadline to one year” in order

to “afford defendants a reasonable opportunity to identify

and understand the patent claims that are relevant to

the litigation,” especially “in light of the present bill’s

enhanced estoppels”.” 22

One might think that once Congress has negotiated

and enacted a deadline for filing a validity-review petition

that runs one year from when litigation is served, that

statutory deadline would control the question of whether

the petition is timely in relation to the litigation. On

February 28, 2025, however, the USPTO adopted a rule

that an inter partes review petition is untimely and will be

“discretionarily denied,” with no exceptions, if the timing

of its filing is such that the district court case will likely

go to trial before the review is completed. 23

22. 157 Cong. Rec. S5429 (daily ed. Sep. 8, 2011).

23. The USPTO had adopted a version of this rule in 2020,

see Apple Inc. v. Fintiv, Inc., IPR2020-00019 (Mar. 20, 2020), but

in response to public outcry, it soon created an exception to the

rule providing that a petition would not be denied if the petitioner

stipulated that it would not raise any invalidity grounds in district

court that it could have raised in the inter partes review. See Sotera

Wireless, Inc. v. Masimo Corp., IPR2020-01019 (Dec. 1, 2020). This

approach was later formalized in a June 21, 2022, memorandum.

See USPTO, Interim Procedure for Discretionary Denials in AIA

Post-Grant Proceedings With Parallel District Court Litigation,

Jun. 21, 2022, available at https://perma.cc/ZN92-T3SN. During

the 2020 to 2025 period, the stipulation exception to the time-totrial rule was more or less absolute: petitioners are aware of only

one case in which a set of petitions was denied despite the entry

12

On March 28, 2025, the USPTO began applying this

new deadline retroactively to petitions that had been

filed the previous year. 24 Between that date and October

17, 2025, the USPTO denied at least 280 inter partes and

post-grant review petitions based on this new time limit. 25

And again, the USPTO did not suspend its application of

this rule after October 2025—it simply stopped providing

any explanation at all for its petition decisions.

In practice, this new time-to-trial rule overwhelmingly

bars patent defendants from seeking validity review if they

have been sued in the Eastern District of Texas. Under

the AIA and its implementing regulations, an inter partes

review is scheduled to be completed 18 months after the

petition is filed.26 The USPTO has concluded, however, that

the average time to trial in the Eastern District of Texas

is about 22 months27—which means that once a defendant

is sued there, it has only four months to prepare and file

a petition under the USPTO’s new time-to-trial rule. Of

the 280 petitions that have been expressly denied under

this rule, 217 petitions—about 77%—have been denied

of such a stipulation. Under the approach adopted by the USPTO

in March 2025, however, stipulations no longer provide any relief

from the new time-to-trial rule.

24. See Motorola Solutions, Inc. v. Stellar, LLC, IPR202401205, -01206, -01207, -01208 (Mar. 28, 2025).

25. See Appendix, supra n.9, at 6.

26. See 37 C.F.R. § 42.107(b); 35 U.S.C. § 314(b); id. § 316(a)(11).

27. See Charter Commc’ns, Inc. v. Adaptive Spectrum and

Signal Alignment, Inc., IPR2024-01379, at 9-11 (Apr. 17, 2025);

Dell Inc. v. Universal Connectivity Techs., Inc., IPR2024-01479,

-01478, at 5-6 (Apr. 7, 2025).

13

because of copending litigation in the Eastern District

of Texas. 28 In effect, the plaintiff’s choice of litigation

venue determines whether the defendant can seek validity

review at the USPTO.

The agency’s new time-to-trial rule also bars review

based on the timing of a copending investigation at the

International Trade Commission. Such investigations are

expedited—they usually are completed in less than 18

months. 29 Thus although only a limited number of these

proceeding are filed each year,30 in 2025 they accounted for

the denial of 25 inter partes review petitions. Notably, the

USPTO bars review based on ITC proceedings despite the

fact that such investigations lack the authority to cancel

invalid patent claims or to preclude their enforcement in

district court. 31

28. For this and other reasons, this district is a favorite

venue of non-practicing patent plaintiffs, who usually acquire their

patents on the secondary market and whose patents tend to be of

low quality. The Eastern and Western Districts of Texas account

for two-thirds of all non-practicing patent plaintiff litigation in the

United States. See Unified Patents, Patent Dispute Report: Q3

in Review, Oct. 9, 2025, available at https://www.unifiedpatents.

com/insights/2025/10/9/patent-dispute-report-q3-2025-in-review.

29. See USITC, Section 337 Statistics: Average Length of

Investigations (updated Feb. 3, 2026), available at https://www.

usitc.gov/intellectual_property/337_statistics_average_length_

investigations.htm.

30. See USITC, Section 337 Statistics: Number of New,

Completed, and Active Investigations By Fiscal Year (updated

Feb. 3, 2026), available at https://www.usitc.gov/intellectual_

property/337_statistics_number_new_completed_and_active.htm.

31. See Hyosung TNS Inc. v. ITC, 926 F.3d 1353, 1358 (Fed.

Cir. 2019).

14

Another provision of the Patent Act estops the

petitioner in a completed inter partes or post-grant review

from challenging the same patent claims in a future

judicial or administrative proceeding. 32 This statutory

estoppel is applied to the petitioner and to its “real parties

in interest and privies.”33 As this Court has noted, while it

would ordinarily violate due process “to bind litigants to

a judgment rendered in an earlier litigation to which they

were not parties,” 34 “there is an exception when it can be

said that there is ‘privity’ between a party to the second

case and a party who is bound by an earlier judgment.” 35

The Court of Appeals has recognized that Congress

consciously adopted these common-law exceptions to

the due-process limits on third party estoppel when

it incorporated the words “privity” and “real party in

interest” into the America Invents Act. 36

On May 2, 2025, however, the USPTO implemented

and began applying a new rule that if a patent’s validity is

challenged in any forum by any party, all other parties are

thereafter estopped from challenging the patent in an AIA

32. See 35 U.S.C. §§ 315(e), 325(e).

33. Id.

34. Richards v. Jefferson County, Ala., 517 U.S. 793, 794

(1996).

35. Id. at 798; see also Fed. Prac. & Proc. § 4448 (“Exceptions

to the rule that nonparties cannot be bound were traditionally

expressed by statements that a judgment is binding on parties

and persons in ‘privity’ with them.”).

36. See Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329,

1335, 1336 (Fed. Cir. 2018).

15

proceeding. 37 This new estoppel extends to third parties

with no relationship at all to the earlier challenger, and

includes third parties who were first sued—or even first

learned of the patent—years after the earlier proceedings

had been completed. During 2025, the USPTO denied at

least 21 petitions based on this new third-party estoppel. 38

It has even applied the new rule to deinstitute a petition

that was filed in June 2023 and that had already resulted

in a final written decision that claims are invalid. 39

The USPTO also has adopted and applied several

other extra-statutory rules to bar petitions for AIA

review. For example, despite the fact that the Court of

Appeals has determined that equitable defenses such as

assignor estoppel do not apply in inter partes and postgrant reviews,40 and despite the fact that this Court has

narrowed the scope of assignor estoppel,41 the USPTO has

begun applying the pre-2021 version of assignor estoppel

to bar petitions for AIA review.42

37. See Verizon Connect Inc. v. Omega Patents LLC,

IPR2023-01162 (May 2, 2025).

38. See Appendix, supra n.9, at 10.

39. See Verizon Connect Inc v. Omega Patents LLC,

IPR2023-01162 (Jun. 3, 2025).

40. See Arista Networks, Inc. v. Cisco Systems, Inc., 908 F.3d

792, 803-04 (Fed. Cir. 2018).

41. See Minerva Surgical, Inc. v. Hologic, Inc., 594 U.S. 559,

576-77 (2021).

42. See Appendix, supra n.9, at 11.

16

By amici’s count, since March 28, 2025, the USPTO

has denied 770 petitions for inter partes or post-grant

review for non-statutory “discretionary” reasons.

Every single one of these petitions cost over $100,000

to prepare and file. Virtually all of them were an important

part of the petitioner’s defense to an allegation of patent

infringement.43 And all these petitions have now been

denied because of ad hoc rules that not only are contrary

to the statutory framework, but in most cases did not even

exist when the petitions were filed.

In the past, the institution rate for AIA proceedings

was consistently about 67% and almost all petition denials

were based on the evidentiary merits.44 But since October

2025, the petition institution rate has plummeted to

25%.45 Unsurprisingly, “[t]he number of America Invents

Act petitions [filed has] continued to crater . . . as [these]

43. The vast majority of AIA review petitions are filed in

response to litigation over the asserted patents. See PTAB Parallel

Litigation Study June 2022, available at https://perma.cc/8KJVV5WY (noting that 80% or more of PTAB petitioners have been

sued by the patent owner prior to the filing of their petition). In

amici’s experience, the bulk of the remaining petitions arise from

situations in which litigation has either been threatened or is

otherwise highly likely.

44. See PTAB Trial Statistics: 2025 End of Year Outcome

Roundup, slide 7, available at https://perma.cc/2NAR-9LGK;

Wilson Sonsini, 2023 PTAB Year in Review, at 2, available at

https://perma.cc/77D8-SLGU.

45. See Theresa Schliep, Squires Snubs 10 IPRs While 4 Pass

Muster In Latest Order, Law360, April 29, 2026.

17

policies . . . [have] settled in”46 and it has become clear

that the USPTO has “effectively shut down inter partes

review for most filers.”47 The following chart, which tracks

all petitions filed since 2015, illustrates the recent decline

in filings:48

IPR Petitions Filed by Month, 2015-May 2026

“Practitioners have done the math: if [inter partes

review] petitions are denied at the front end regardless

of merit, the cost-benefit calculus no longer works.”49 By

administrative fiat, the congressionally enacted system of

patent validity review has been “functionally suspended.”50

46. Theresa Schliep, PTAB Petitions Continue To Plummet

As Reexams Surge, Law360, April 17, 2026.

47. Dennis Crouch, Borrowing from the Board: District

Court Obviousness in the Post-IPR Era, May 21, 2026, available

at https://perma.cc/UAC8-CNGX.

48. See Dennis Crouch, Inter Partes Review in 2026, May

24, 2026, available at https://perma.cc/QE34-RUTC.

49. Id.

50. Id.

18

II. PTAB petitioners—and the public—have legitimate

interests in AIA reviews that are entitled to legal

protection.

As a result of the USPTO’s retroactive application of

its new PTAB rules, there are now hundreds of patentinfringement lawsuits going forward in the United States

in which the defendant prepared and filed a PTAB petition

challenging the validity of the asserted patent, but the

agency refused to consider the petition on its merits. 51

There is no need to speculate as to the likely

consequences of the USPTO’s actions; recent experience

shows us exactly what will happen. During 2020, when

the USPTO experimented with an earlier version of its

time-to-trial rule, 52 the rule was applied retroactively to

bar review of a series of patents that had been asserted

against Intel Corporation. During the next two years, two

of those patents, after “discretionary” denial of review

by the agency, went to trial and resulted in $2.3 billion

in damages awards against Intel to VLSI Technology

LLC, a non-practicing entity controlled by Fortress

Investment Group, which is owned by financial interests

in Abu Dhabi. 53

51. Histor ically, the Board has found a “reasonable

likelihood” that a patent is invalid and institutes review for about

two-thirds of petitions and then found all claims invalid in a final

written decision for about 65% of those instituted petitions. See

PTAB Trial Statistics: 2025 End of Year Outcome Roundup, slides

7, 11, supra n.44.

52. See generally supra n.23.

53. See Reuters, Intel loses U.S. patent trial, ordered to pay

$2.18 billion to VLSI Tech, Mar. 2, 2021; Britain Eakin, Intel Hit

19

The next year, however, the USPTO allowed other

entities to challenge the same patents, on the same

grounds that Intel had tried to present—and concluded

that all the challenged claims are invalid as obvious. 54

In other words, the “discretionary” denial of review

allowed VLSI to go to trial and seek billions in damages

from America’s leading-edge chip manufacturer based

on two patents that the USPTO has now determined

are invalid. This type of litigation diverts resources

away from investment in building new chip fabs and

in maintaining America’s leadership in this critical

technology. Immunizing such suits form validity review

risks the unjustified transfer of money to entities that

contribute nothing to the United States manufacturing

economy.

And again, this experience is now being repeated in

hundreds of lawsuits across the country—cases in which

frequently hundreds of millions, and at times billions, of

dollars are at stake. As a broad coalition of businesses

recently warned, “[i]f these Patent Office policies remain

unchecked, they will lead to a systematic looting of the

American industrial economy.”55

With $949M Verdict In Latest VLSI Patent Fight, Law360, Nov.

5, 2022.

54. See Intel Corp. v. VLSI Tech. LLC, IPR2021-01064 (May

12, 2023); Patent Quality Assurance, LLC v. VLSI Tech. LLC,

IPR2021-01229 (June 13, 2023).

55. See Adam Lidgett, Industry Groups Want Trump Admin

To Stop PTAB Changes, Law360, Nov. 4, 2025.

20

Nevertheless, the Federal Circuit has determined that

defendants that are sued on invalid patents do not suffer

any prejudice from the USPTO’s arbitrary restrictions

on access to AIA reviews—even when these rules are

applied retroactively—because a defendant remains free

“to properly raise its patentability defenses elsewhere.”56

AIA reviews, however, are the only contested

proceedings in which an issued patent can be evaluated

by the USPTO’s technical experts. Courts have long

recognized the benefits of applying such expertise to the

difficult scientific questions that often arise in patent

cases. 57

And more fundamentally, it is Congress itself that

decided that the opportunity to raise validity defenses

during infringement litigation is not enough. Although

civil litigation over patent validity has always been

available, since 1980, Congress has authorized—and

56. In re Motorola Sols., 159 F.4th 30, 38 (Fed. Cir. 2025).

57. See, e.g., Cochrane v. Deener, 94 U.S. 780, 784 (1876)

(“Neither courts nor ordinary juries are perfectly adapted to the

investigation of mechanical and scientific questions”—“it would,

perhaps, be desirable if all cases of this sort could be referred to

a commission of intelligent experts and practical men”); ParkeDavis & Co. v. H. K. Mulford Co., 189 F. 95, 115 (C.C.S.D.N.Y. 1911)

(Hand, J.) (noting the challenges of ruling on a chemical patent

case “without any knowledge of even the rudiments of chemistry,”

and suggesting the creation of a tribunal of “technical judges to

whom technical questions are submitted”); the Honorable Alan

D Albright, U.S. District Judge (W.D. Tex.) (“[N]ever, ever, ever,

ever, ever offer an obviousness argument to a jury,” as the jury

will not understand it.) (quoted in Dani Kass, What Judges Want

You to Know: Litigate Smarter, Law360, Feb. 11, 2025).

21

repeatedly reenacted and refined—post-issuance review

at the USPTO. 58 The proceedings serve the “important

congressional objective” of applying the USPTO’s

expertise to “revisit and revise earlier patent grants,”

Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 272 (2016),

thereby addressing “overpatenting and its diminishment

of competition.” Thryv, Inc v. Click-To-Call Techs., LP,

590 U.S. 45, 54 (2020).

III. The statutory framework for patent-validity

reviews is not merely advisory or optional for the

agency to follow.

Section 314—“the section housing the command to the

Director to ‘determine whether to institute,’” Thryv, 590

U.S. at 57—does not actually use the word “discretion.”

The Court of Appeals has nevertheless identified

unbounded discretion in the statute because its institutionthreshold determination is stated in the negative—the

Director “may not authorize an inter partes review to

be instituted . . . unless [the meris threshold is met].” 35

U.S.C. § 314(a). Because of this language, the Federal

Circuit has concluded that “the Director is . . . never

compelled[] to institute [review].” Mylan Labs. Ltd. v.

58. See H.R. Rep. No. 96-1307, 96th Cong., at 4 (1980)

(emphasizing the need “to have the validity of patents tested in

the Patent office where the most expert opinions exist and at a

much reduced cost”) (report to accompany H.R. 6933, authorizing

reexamination of patents); Weekly Compilation of Presidential

Documents, President Jimmy Carter, Dec. 12, 1980, Vol. 16, No. 50

(Statement on Signing H.R. 6933 into Law) (“Patent reexamination

will. . . . improve the reliability of reexamined patents, thereby

reducing the costs and uncertainties of testing patent validity in

the courts.”).

22

Janssen Pharm., N.V., 989 F.3d 1375, 1382 (Fed. Cir. 2021)

(emphasis added). Under this construction, the law merely

sets a floor that can be revised upward—the agency has

discretion to impose conditions more demanding than

those that Congress enacted.

A.

The Federal Circuit’s interpretation would

wreak havoc with other federal statutes.

The “may not . . . unless” statutory formulation

is hardly unique to the America Invents Act. Many

other federal statutes that establish rules for agencies

to follow employ the same language. And particularly

when these statutes set rules for regulating private

parties’ conduct or proceedings, it should be obvious

that Congress did not intend that its codified criteria

for agency decisionmaking would serve as a mere polite

suggestion to the agency.

Several statutes use this formulation to set rules

for an agency to apply when regulating the licensure

of various businesses and professions. The words “may

not . . . unless” govern the application of the statutory

standards that determine who may operate the businesses

of providing passenger transportation between maritime

ports, 59 processing or catching fish,60 providing certain

59. See 46 U.S.C. § 55103(a) (“A vessel may not transport

passenger between ports or places . . . unless”); see also id.

§ 40901(a).

60. See 46 U.S.C. § 4503(a) (“A vessel to which this subsection

applies may not be operated unless”); see also 16 U.S.C. § 5503(a)

(“No high seas fishing vessel shall engage in harvesting operations

on the high seas unless”).

23

telecommunication or information services,61 broadcasting

low-power television signals,62 operating an insured State

bank,63 originating loans,64 or selling motor vehicles.65 The

same statutory formulation also governs whether healthcare professionals under military jurisdiction may work

in their professions.66

The persons regulated under these statutes may

believe that their right to pursue their livelihoods is

determined by the conditions established in the statutes.

Under the Federal Circuit’s construction, however, the

regulating agency “is never compelled” to allow them to

do so. Mylan, 989 F.3d at 1382. The agencies would be

free to elevate the statutory requirements or to impose

61. See 47 U.S.C. § 272(a)(1) (“A Bell operating company

(including any affiliate) which is a local exchange carrier that is

subject to the requirements of section 251(c) of this title may not

provide any service described in paragraph (2) unless”).

62. See 47 U.S.C. § 336(f)(7) (“The Commission may not grant

a class A license . . . unless”).

63. See 12 U.S.C. § 1831a (“an insured State bank may not

engage as principal in any type of activity that is not permissible

for a national bank unless”).

64. See 12 U.S.C. § 5103(a) (“an individual may not engage in

the business of a loan originator without first”).

65. See 49 U.S.C. § 30112(a)(1) (“a person may not manufacture

for sale, sell, offer for sale, introduce or deliver for introduction in

interstate commerce, or import into the United States, any motor

vehicle or motor vehicle equipment . . . unless”).

66. See 10 U.S.C. § 1094(a)(1) (“A person under the jurisdiction

of the Secretary of a military department may not provide health

care independently as a health-care professional under this

chapter unless”).

24

additional conditions—a fishing vessel, for example, could

also be required by the agency to pay for and carry a

government-certified third-party observer to ensure

compliance with the agency’s rules—regardless of what

the statute says.

Persons facing federal or state criminal punishment

may also find themselves at a disadvantage under the

Federal Circuit’s interpretive approach. Such persons may

believe that they can appeal their conviction or sentence

upon making “a substantial showing of the denial of a

constitutional right,”67 but the relevant statutes’ use of

“may not . . . unless” would indicate, per the decision

below, that this is only a floor—other conditions may also

be imposed on the right to appeal.68

Private landlords could find that they are never

allowed to increase rents; 69 candidates for office that

they can never use campaign funds to travel by air;70

certain overseas tort claimants could never seek relief;71

67. 28 U.S.C. § 2253(c)(2).

68. See id. § 2253(c)(1) (“Unless a circuit justice or judge

issues a certificate of appealability, an appeal may not be taken

to the court of appeals from . . . the final order in a habeas corpus

proceeding [challenging State or Federal detention]”).

69. See 42 U.S.C. § 1490j (“The Secretary may not approve

any increase in rental payments . . . unless”).

70. 52 U.S.C. § 30114(c)(1) (“a candidate for election for

Federal office . . . or any authorized committee of such a candidate,

may not make any expenditure for a flight on an aircraft unless”).

71. See 7 U.S.C. § 2262a(b) (“A claim may not be allowed

under this section unless”).

25

and customer claims could never be subordinated in

bankruptcy 72 —all because Congress gave an agency or

tribunal discretion to depart from statutory standards

by using the words “may not . . . unless.”

The same statutory wild card even applies to other

aspects of intellectual-property law. The Copyright Claims

Board would never be required to entertain a claim73 and

the USPTO would never be required to allow a patent

applicant to claim priority to its provisional application74

under the Federal Circuit’s statutory construction.

If the decision below is correct, then all these statutes

vest their administrators with unbridled power over the

American people. For all these statutory schemes to

operate within the specified legal constraints—as was

obviously intended—then only the decision below need

be wrong.

72. 11 U.S.C. § 747 (“unless all other customer net equity

claims have been paid in full, the trustee may not pay . . . any net

equity claim of a customer”).

73. 17 U.S.C. § 1505(a) (“A claim or counterclaim alleging

infringement of an exclusive right in a copyrighted work may

not be asserted before the Copyright Claims Board unless”); id.

§ 1504(b)(1) (“A proceeding may not be maintained before the

Copyright Claims Board unless”).

74. See 35 U.S.C. § 119(e)(2) (“A provisional application filed

under section 111(b) may not be relied upon in any proceeding in

the Patent and Trademark Office unless”).

26

B. Inter partes review’s statutory safety valve

confirms that broad “resources” discretion was

not intended by Congress.

The USPTO has suggested that “resource constraints”

compel it to arbitrarily restrict access to AIA reviews.75

That justification is inconsistent with the structure

Congress established. The statute itself requires the

agency to set fees for the proceedings that are adequate

to cover the “aggregate costs” of conducting the reviews.76

There is no question that the fees that the USPTO has

been collecting have been sufficient for this purpose.

Moreover, AIA proceedings are not enforcement

proceedings in which the agency investigates and prepares

its case. They are adjudicative proceedings in which the

petitioner develops the evidence and brings the case to the

agency—the PTAB simply decides whether the petitioner

has met its burden of proof. There can be no dispute that

the USPTO can address the merits of every PTAB petition

that is presented to it—it did address the merits of almost

every petition prior to the agency’s recent enthusiasm for

“discretionary denials.”

Finally, the statute itself provided a resources

safety valve during the initial years of standing up the

proceedings. Titled “Graduated Implementation,” this

provision authorized the Director to “impose a limit on

the number of inter partes reviews that may be instituted

. . . during each of the first 4 1-year periods [that the

75. See, e.g., USPTO Brief in Federal Circuit Appeal No.

2025-148, at 32.

76. See 35 U.S.C. §§ 311(a), 321(a).

27

proceedings] are in effect.” 77 The fact that Congress

enacted this provision—which was never used and expired

in 2016—confirms that it did not understand the AIA

to otherwise vest the Director with unlimited authority

to impose extra-statutory restrictions on access to AIA

proceedings.

CONCLUSION

The petition for certiorari should be granted.

Respectfully submitted,

Joseph Matal

Counsel of Record

Clear IP, LLC

888 16th Street, NW Suite 300

Washington, DC 20006

(202) 654-4500

joseph.matal@clearpatents.com

Counsel for Amici Curiae

Dated: May 29, 2026

77. AIA, Pub. L. No. 112-29, § 6(c)(2)(B).