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

No. 25-1230

In the Supreme Court of the United States

GOOGLE LLC,

v.

Petitioner,

VIRTAMOVE, CORP., ET AL.,

Respondents.

ON PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

BRIEF FOR UNIFIED PATENTS, LLC

AS AMICUS CURIAE

IN SUPPORT OF PETITIONER

ANGELA M. OLIVER

DEBRA J. MCCOMAS

HAYNES AND BOONE, LLP

Counsel of Record

888 16th Street, N.W., Ste. 300 MICHAEL F. QIAN

Washington, DC 20006

HAYNES AND BOONE, LLP

2801 N. Harwood Street, Ste. 2300

JONATHAN STROUD

Dallas, TX 75201

ROSHAN MANSINGHANI

(214) 651-5375

KELLY R. HUGHES

debbie.mccomas@haynesboone.com

UNIFIED PATENTS, LLC

1015 15th Street NW, Ste. 629

Washington, DC 20005

i

TABLE OF CONTENTS

TABLE OF CONTENTS ............................................. i

TABLE OF AUTHORITIES....................................... ii

INTEREST OF AMICUS CURIAE ............................1

INTRODUCTION AND SUMMARY OF

ARGUMENT ..........................................................2

ARGUMENT ...............................................................3

I.

II.

The

reviewability

question

is

exceptionally important. ..................................3

A.

Federal Circuit reviewability

precedent has immunized the

PTO from ordinary limits on

agency power. .........................................3

B.

The PTO has exercised its

unreviewable power to rewrite the

IPR scheme Congress designed. ............6

C.

The PTO’s actions have upended

IPR and the patent system. ................. 13

The “settled expectations” constraint on

IPR is especially detrimental to the

patent system.................................................. 17

CONCLUSION .......................................................... 22

ii

TABLE OF AUTHORITIES

Page(s)

Cases

Apple Inc. v. Fintiv, Inc.,

No. IPR2020-00019, Paper 11

(U.S.P.T.O. Mar. 20, 2020) ................................. 6

Apple Inc. v. Vidal,

63 F.4th 1 (Fed. Cir. 2023).................................. 4

Block v. N. Dakota ex rel. Bd. of Univ. &

Sch. Lands,

461 U.S. 273 (1983) ........................................... 20

In re Cambridge Indus. USA Inc.,

No. 26-101, 2025 WL 3526129 (Fed. Cir.

Dec. 9, 2025) .................................................... 4, 5

Cuozzo Speed Techs., LLC v. Lee,

579 U.S. 261 (2016) ............................................. 5

Dabico Airport Sols. Inc. v. AXA Power ApS,

IPR2025-00408, Paper 21 (U.S.P.T.O.

June 18, 2025) ..................................................... 8

FCC v. Prometheus Radio Project,

592 U.S. 414 (2021) ............................................. 4

Intel Corp. v. Advanced Cluster Sys., Inc.,

IPR2025-00795, Paper 13 (U.S.P.T.O.

Aug. 14, 2025) ..................................................... 9

JTEKT Corp. v. GKN Auto. LTD,

898 F.3d 1217 (Fed. Cir. 2018) ......................... 20

iii

Kahoot! AS v. Interstellar Inc.,

IPR2025-00696, 2025 WL 2176613

(U.S.P.T.O. July 31, 2025) .................................. 8

In re Motorola Sols., Inc.,

159 F.4th 30 (Fed. Cir. 2025).......................... 4, 5

Motorola Sols., Inc. v. Stellar, LLC,

IPR2024-01205, -01206, -01207, -01208,

Paper 19 (U.S.P.T.O. Mar. 28, 2025)................ 10

Mylan Lab’ys Ltd. v. Janssen

Pharmaceutica, N.V.,

989 F.3d 1375 (Fed. Cir. 2021) ........................... 4

SAS Inst., Inc. v. Iancu,

584 U.S. 357 (2018) ............................................. 5

Sotera Wireless, Inc. v. Masimo Corp.,

IPR2020-01019, Paper 12

(U.S.P.T.O.Dec. 1, 2020) ..................................... 6

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

590 U.S. 45 (2020) ........................................... 2, 5

Tianma Microelectronics Co. v. LG Display

Co.,

IPR2025-01579, Paper 12 (U.S.P.T.O.

Mar. 18, 2026) ..................................................... 9

Webgroup Czech Republic, A.S. v. DISH

Techs.,

IPR2025-00467, Paper 14 (U.S.P.T.O.

July 16, 2025) ...................................................... 9

iv

Statutes and Regulations

5 U.S.C. 701(a)(2) ..................................................... 5

5 U.S.C. 706(2)(A)..................................................... 8

35 U.S.C. 311 .............................................. 10, 11, 18

35 U.S.C. 311(b)...................................................... 10

35 U.S.C. 314(a)...................................................... 18

35 U.S.C. 314(d)........................................................ 5

35 U.S.C. 315(b)...................................................... 11

35 U.S.C. 315(e) ...................................................... 20

35 U.S.C. 315(e)(2) ................................................... 7

35 U.S.C. 319 .......................................................... 19

America Invents Act, Pub. L. No. 112-29,

125 Stat. 284 ..................................................... 16

88 Fed. Reg. 24,503 (Apr. 21, 2023) ....................... 12

89 Fed. Reg. 28,693 (Apr. 19, 2024) ....................... 12

90 Fed. Reg. 48,335 (Oct. 17, 2025) ....................... 12

90 Fed. Reg. 48,342 (Oct. 17, 2025) ....................... 12

v

Miscellaneous

Brian J. Love, An Empirical Study of Patent

Litigation Timing: Could a Patent Term

Reduction Decimate Trolls Without

Harming Innovators?, 161 U. Pa. L. Rev.

1309, 1334 (2013) ........................................ 21, 22

Dennis Crouch, Inter Partes Review in 2026,

Patently-O (May 24, 2026,

https://patentlyo.com/patent/2026/05/int

er-partes-review-in- 2026.html......................... 14

H.R. Rep. No. 112-98 (2011)....................... 15, 16, 19

Lauren Cohen et al., Patent Trolls: Evidence

from Targeted Firms, Mgmt. Sci. 5461

(2019) ................................................................. 21

Memorandum from Coke Morgan Stewart

to All PTAB Judges, Interim Processes

for PTAB Workload Management (Mar.

26, 2025),

https://www.uspto.gov/sites/default/files/

documents/InterimProcessesPTABWorkloadMgmt-20250326.pdf .............. 8, 9

Memorandum from John A. Squires to All

PTAB Judges, Director Institution of AIA

Trial Proceedings (Oct. 17, 2025),

https://www.uspto.gov/sites/default/files/

documents/Director_Institution_of_AIA_

Trial_Proceedings.pdf ....................................... 10

vi

Memorandum from Katherine K. Vidal to

Members of the Patent Trial and Appeal

Board, Interim Procedure for

Discretionary Denials in AIA Post-Grant

Proceedings with Parallel District Court

Litigation (June 21, 2022),

https://www.uspto.gov/sites/default/files/

documents/interim_proc_discretionary_d

enials_aia_parallel_district_court_litigat

ion_memo_20220621_.pdf ............................... 7, 8

Memorandum from Scott R. Boalick to

Members of the Patent Trial and Appeal

Board, Guidance on USPTO’s recission

of “Interim Procedure for Discretionary

Denials in AIA Post-Grant Proceedings

with Parallel District Court Litigation”

(Mar. 24, 2025),

https://www.uspto.gov/sites/default/files/

documents/guidance_memo_on_interim_

procedure_recission_20250324.pdf............... 9, 10

Oversight of the U.S. Patent and Trademark

Office (Mar. 25, 2026),

https://judiciary.house.gov/committeeactivity/hearings/oversight-us-patentand-trademark-office-2 ..................................... 11

Patent Trial and Appeal Board, PTAB Trial

Statistics (Apr. 2026),

https://www.uspto.gov/sites/default/files/

documents/April_2026_Trial_Statistics.p

df ........................................................................ 13

vii

Patrick Leahy, New USPTO rulemaking

should seek to strengthen, not weaken,

the America Invents Act, The Hill, May

25, 2023,

https://thehill.com/opinion/congressblog/4020170-leahy-new-usptorulemaking-should-seek-to-strengthennot-weaken-the-america-invents-act ............... 11

Paul R. Gugliuzza & Mark A. Lemley,

Myths and Reality of Patent Law at the

Supreme Court, 104 B.U. L. Rev. 891

(2024) ................................................................. 13

S. Rep. 110-259 (2008)...................................... 15, 18

Sara Tonnies Horton et al., The Unsettling

History of Settled Expectations, Chi.Kent J. Intell. Prop. 252 (2026) ........................ 20

Sarah Geers et al., An Empirical Dissection

of Discretionary Denials Following

Bifurcation Policy, Chi.-Kent J. Intell.

Prop. 238 (2026) ................................................ 14

Unified Patents, Patent Dispute Report:

2025 in Review (Jan. 13, 2026),

https://www.unifiedpatents.com/insights/

2026/1/13/patent-dispute-report-2025-inreview .................................................... 13, 16, 17

Unified Patents, Patent Dispute Report: Q1

2026 (Apr. 14, 2026),

https://www.unifiedpatents.com/insights/

2026/4/14/patent-dispute-report-q12026?rq=year%20in%20review ...... 13, 14, 15, 16

viii

Unified Patents, The Public Has Spoken:

Stakeholders Overwhelmingly Oppose

Proposed Restrictions on Patent Trial

and Appeal Board Review (Sept. 5,

2023),

https://www.unifiedpatents.com/insights/

2023/9/05/anprm-public-comments .................. 12

Unified Patents, The Public Has Spoken –

Again: For a Second Time, Stakeholders

Overwhelmingly Oppose Agency

Proposals that Would Restrict Access to

Inter Partes Review (Dec. 18, 2025),

https://www.unifiedpatents.com/insights/

2025/12/17/the-public-has-spoken-again.......... 12

USPTO Fee Schedule, USPTO (last revised

May 1, 2026),

https://www.uspto.gov/learning-andresources/fees-and-payment/uspto-feeschedule ............................................................. 14

1

INTEREST OF AMICUS CURIAE 1

Unified Patents, LLC (“Unified”) is a membership

organization that seeks to improve patent quality and

deter unsubstantiated or invalid patent assertions in

defined technology sectors. In particular, Unified is

dedicated to deterring non-practicing entities (“NPEs”),

particularly patent assertion entities and litigation

investment entities, from extracting nuisance settlements

from operating companies based on patents that are likely

invalid.

To that end, Unified provides a variety of services to

its members, including analytics, prior art, invalidity

contests, patentability analysis, administrative patent

review, amicus briefs, economic surveys, and standard

essential patent essentiality studies. In addition, Unified

monitors patent ownership data and secondary-market

patent sales. Unified also challenges patents it believes

are unpatentable or invalid. This has included challenges

in inter partes review (“IPR”).

IPR is a vital tool for ensuring the integrity of the

patent system and stopping the assertion of poor-quality

patents. As an organization dedicated to those purposes,

Unified urges this Court to grant review to preserve

IPR’s crucial functions.

1 No counsel for a party authored this brief in whole or in part and

no counsel, party, or person other than amicus curiae and its counsel

made a monetary contribution intended to fund the preparation or

submission of the brief. Notice of the intent to file this brief was

provided to all parties’ counsel at least ten days prior to filing.

2

INTRODUCTION

AND SUMMARY OF ARGUMENT

The questions presented are vitally important to the

Nation’s patent system and warrant this Court’s review.

“Congress, concerned about overpatenting and its

diminishment of competition,” established IPR “to weed

out bad patent claims efficiently.” Thryv, Inc. v. Click-ToCall Techs., LP, 590 U.S. 45, 54 (2020). Congress directed

the U.S. Patent and Trademark Office (“PTO”) to

implement the statutory IPR scheme.

Now the PTO is rewriting that scheme. Enabled by

Federal Circuit precedent, the PTO wields unreviewable

power to devise its own limits on IPR availability. As the

law currently stands, the PTO can exceed its statutory

authority and no court can do anything about it.

The PTO’s exercise of this unreviewable power is

harming the patent system—and the situation has

worsened considerably in the past year. The agency has

unilaterally devised an array of new constraints on IPR.

And since 2025, the PTO has imposed its most significant

IPR limits yet. These unilateral agency actions are

shutting down the IPR system. The public suffers, and

entities that use weak patents to extract fees from

productive companies benefit.

The PTO’s “settled expectations” constraint on IPR is

especially consequential. By insulating patents from IPR

based on their age, this new doctrine inflicts harm

throughout the patent system. It protects invalid patents,

burdens courts and the PTO with unnecessary disputes,

and prejudices stakeholders. Worst of all, it shields the

very patents that are most likely to be deployed in abusive

litigation against productive companies.

3

The PTO’s actions have upended the system Congress

designed. In the last year, the situation has grown worse

than ever. This Court’s review is urgently needed.

ARGUMENT

I.

The reviewability question is exceptionally

important.

The petition presents an exceptionally important

question regarding the judicial reviewability of the PTO’s

authority over IPR institution. That question has

sweeping consequences for the Nation’s patent system,

far beyond the specific challenge at issue here.

The Federal Circuit’s reviewability precedent

insulates the PTO from a wide range of statutory

challenges for any IPR institution criteria it might devise.

Exercising that unreviewable power, the PTO has devised

an array of extra-statutory institution criteria—including

not just the “settled expectations” constraint, but an evergrowing list of agency revisions to the IPR scheme.

The consequences have been severe, especially in the

last year. IPR institution rates and IPR filings are at alltime lows. The PTO’s unilateral actions are choking off

access to IPR and dismantling a vital scheme Congress

established to ensure the integrity of the Nation’s patent

system.

A. Federal Circuit reviewability precedent has

immunized the PTO from ordinary limits on

agency power.

The Federal Circuit’s reviewability precedent gives

the PTO extraordinary powers. Ordinary agencies must

4

adhere to limits established by Congress and enforced by

courts. Not so for the PTO under Federal Circuit law.

According to the Federal Circuit, the PTO apparently

has judicially unreviewable power over the “content” of

IPR institution criteria. Apple Inc. v. Vidal, 63 F.4th 1, 13

(Fed. Cir. 2023); see also, e.g., Pet. App. 1a; In re

Cambridge Indus. USA Inc., No. 26-101, 2025 WL

3526129, at *3 (Fed. Cir. Dec. 9, 2025); Mylan Lab’ys Ltd.

v. Janssen Pharmaceutica, N.V., 989 F.3d 1375, 1382 (Fed.

Cir. 2021). So the PTO can apply whatever criteria it

devises—no matter how much they exceed Congress’s

limits on the agency’s authority.

The Federal Circuit has thus left the PTO free from

usual limits on agency action. A normal agency must obey

its enabling statute and the Administrative Procedure Act

(“APA”). But under Federal Circuit law, when devising

IPR institution criteria, the PTO can do any of the

following without judicial review:

•

Act “ultra vires,” Mylan, 989 F.3d at 1382-83

(denying judicial review of such a claim);

•

Devise standards contrary to statute, see, e.g.,

Mylan, 989 F.3d at 1381; Apple, 63 F.4th at 11; In

re Cambridge, 2025 WL 3526129, at *2-3;

•

Adopt standards that are “not ‘reasonable and

reasonably explained,’” Apple, 63 F.4th at 11

(quoting FCC v. Prometheus Radio Project, 592

U.S. 414, 423 (2021));

•

Change position with no explanation, see, e.g., In

re Motorola Sols., Inc., 159 F.4th 30, 38 (Fed. Cir.

2025); Cambridge, 2025 WL 3526129, at *2-3; Pet.

5

at 20-21, In re Cambridge Indus. USA Inc., No. 26101 (Fed. Cir. Oct. 10, 2025) (“Cambridge Pet.”);

•

Apply new rules retroactively without statutory

authority, see, e.g., In re Motorola, 159 F.4th at 38;

Pet. at 27, In re Motorola Sols., Inc., No. 25-134

(Fed. Cir. June 23, 2025); Cambridge, 2025 WL

3526129, at *2-3; Cambridge Pet. 20;

•

Regulate without accounting for relevant

considerations, like reliance interests, see, e.g., In

re Motorola, 159 F.4th at 38; Cambridge, 2025 WL

3526129, at *2-3; Cambridge Pet 20-21.

These are fundamental, universal limits on agency

power, and the Federal Circuit was wrong to hold them

judicially unenforceable against the PTO. To be sure, 35

U.S.C. 314(d) makes “final and unappealable” the

“determination by the Director whether to institute an

inter partes review under this section.” But under this

Court’s precedents, that merely bars review of “‘ordinary

dispute[s] about the application of’ an institution-related

statute.” Thryv, 590 U.S. at 54 (quoting Cuozzo Speed

Techs., LLC v. Lee, 579 U.S. 261, 271 (2016)). “If a party

believes the Patent Office has engaged in ‘shenanigans’ by

exceeding its statutory bounds, judicial review remains

available.” SAS Inst., Inc. v. Iancu, 584 U.S. 357, 371

(2018) (citation omitted). The Federal Circuit is mistaken

that Section 314(d) immunizes the PTO for all statutory

violations, no matter how blatant the violation, how

fundamental the issue, or how universal the requirement.

Nor are the PTO’s statutory violations shielded from

review by 5 U.S.C. 701(a)(2), which makes APA review

unavailable “to the extent that . . . agency action is

committed to agency discretion by law.” Statutory

challenges to the PTO’s IPR institution criteria concern

6

limits on the agency’s discretion. Section 701(a)(2) does

not disable courts from deciding in the first place whether

the agency has the discretion it claims. Yet the Federal

Circuit declines to review at all whether the PTO has

exceeded its authority.

B. The PTO has exercised its unreviewable

power to rewrite the IPR scheme Congress

designed.

Exercising its unreviewable power under Federal

Circuit law, the PTO has revamped the IPR scheme

Congress designed. The changes include—but extend far

beyond—the “settled expectations” doctrine. Over the

years, the PTO has invented (then re-invented) an array

of new limits on IPR availability. All of these changes

depart from Congress’s enactments—and all were

devised unilaterally by the agency on its own whim.

The PTO’s unilateral revisions to the IPR scheme

include:

•

“Fintiv” time-to-trial limit: The PTO created a new

timing requirement, making IPR unavailable if the

IPR comes too close to the trial date in a related

district-court proceeding. See Apple Inc. v. Fintiv,

Inc., No. IPR2020-00019, Paper 11, at 5-6

(U.S.P.T.O. Mar. 20, 2020) (precedential).

•

Surrender of district-court claims (“Sotera

stipulations”): The PTO grafted an exception onto

its Fintiv time-to-trial limit, allowing IPR

petitioners to avoid that limit by stipulating not to

raise certain claims in district-court litigation (any

ground raised or that could have been reasonably

raised in an IPR). Sotera Wireless, Inc. v. Masimo

Corp., IPR2020-01019, Paper 12, at 18 (U.S.P.T.O.

7

Dec. 1, 2020) (precedential as to Section II.A). In

effect, this conditions IPR institution on

petitioners surrendering district-court claims. And

it rewrites Congress’s choice for IPR’s estoppel

effect on district-court litigation—which attaches

only upon the final written decision in IPR, not

institution. 35 U.S.C. 315(e)(2).

•

Dispositive Sotera stipulations: The PTO then

increased the pressure to surrender district-court

claims by making Sotera stipulations dispositive:

the PTO promised not to deny IPR institution “in

view of parallel district court litigation” when the

petitioner executes a Sotera stipulation.

Memorandum from Katherine K. Vidal to

Members of the Patent Trial and Appeal Board,

Interim Procedure for Discretionary Denials in

AIA Post-Grant Proceedings with Parallel District

Court Litigation at 2-3 (June 21, 2022) (“Vidal

Memo”). 2

•

Reversal on Fintiv time-to-trial limit for ITC

proceedings: While the PTO initially applied the

Fintiv time-to-trial limit when there were parallel

proceedings in the International Trade

Commission (“ITC”), in 2022 the PTO reversed

course and declared that it would not “apply[]

Fintiv to a parallel ITC proceeding.” Vidal Memo

6-7.

•

Compelling-merits exception to Fintiv time-totrial limit: In 2022, the PTO created a new

exception to its Fintiv time-to-trial limit:

2 https://www.uspto.gov/sites/default/files/documents/interim_

proc_discretionary_denials_aia_parallel_district_court_litigation_m

emo_20220621_.pdf.

8

notwithstanding proximity to a parallel districtcourt trial, “compelling, meritorious challenges

will be allowed to proceed” in IPR. Vidal Memo 3-4.

Then the PTO’s activity hit a new level. In just the last

year, the PTO has unleashed its most significant changes

yet:

•

“Settled expectations”: The PTO created a new

limit on IPR: it began denying institution on the

ground that the patent is too old (and therefore has

engendered “settled expectations”). Memorandum

from Coke Morgan Stewart to All PTAB Judges,

Interim Processes for PTAB Workload

Management (Mar. 26, 2025) (“Stewart Memo”) 3;

Dabico Airport Sols. Inc. v. AXA Power ApS,

IPR2025-00408, Paper 21, at 2 (U.S.P.T.O. June 18,

2025). The PTO has suggested that this constraint

may take effect when a patent is around six years

old. Kahoot! AS v. Interstellar Inc., IPR202500696, 2025 WL 2176613, at *1 (U.S.P.T.O. July 31,

2025). Yet the PTO declines to give clear notice of

how old a patent must be to trigger “settled

expectations.” Dabico, supra, Paper 21, at 3

(“[T]here is no bright-line rule on when

expectations become settled.”). Contra 5

U.S.C. 706(2)(A) (prohibition on arbitrary and

capricious agency action).

•

Prior-adjudication limit: The PTO created another

new limit on IPR: it now denies petitions because

the patent claims had been challenged elsewhere—

even if the prior proceeding involved different

3 https://www.uspto.gov/sites/default/files/documents/Interim

Processes-PTABWorkloadMgmt-20250326.pdf.

9

parties and different issues. Stewart Memo 2;

Webgroup Czech Republic, A.S. v. DISH Techs.,

IPR2025-00467, Paper 14, at 2-3 (U.S.P.T.O. July

16, 2025); Intel Corp. v. Advanced Cluster Sys.,

Inc., IPR2025-00795, Paper 13, at 2-3 (U.S.P.T.O.

Aug. 14, 2025).

•

Bar on foreign-government-affiliated petitioners:

Creating yet another new limit on IPR, the PTO

now denies institution when the petitioner is

affiliated with a foreign government. Tianma

Microelectronics Co. v. LG Display Co., IPR202501579, Paper 12, at 3-7 (U.S.P.T.O. Mar. 18, 2026).

•

Reversal on dispositive Sotera stipulations: The

PTO reversed course on Sotera stipulations: now,

a Sotera stipulation “will not be dispositive by

itself.” Memorandum from Scott R. Boalick to

Members of the Patent Trial and Appeal Board,

Guidance on USPTO’s recission of “Interim

Procedure for Discretionary Denials in AIA PostGrant Proceedings with Parallel District Court

Litigation” 2-3 (Mar. 24, 2025) (“Boalick Memo”). 4

•

Re-reversal on Fintiv time-to-trial limit for ITC

proceedings: The PTO reinstated its previously

abandoned rule on ITC proceedings: now, once

again, a parallel ITC proceeding does trigger the

Fintiv timing requirement. Boalick Memo 2.

•

Reversal on compelling-merits exception: The

PTO also reversed its 2022 compelling-merits

exception: now, “compelling merits” are not

4 https://www.uspto.gov/sites/default/files/documents/guidance_

memo_on_interim_procedure_recission_20250324.pdf.

10

enough to permit an IPR petition to proceed when

there is parallel litigation. Boalick Memo 3.

•

•

Sotera “plus” stipulations: The PTO expanded the

scope of what petitioners must surrender to pursue

IPR. Now the PTO has indicated that petitioners

should give up their ability to raise in district court

not just arguments available in IPR, but also

arguments available only in district court. In

particular, the PTO has encouraged stipulations

forgoing “system art” challenges—challenges

based on a type of prior art that can be raised in

district court but not in IPR. Motorola Sols., Inc. v.

Stellar, LLC, IPR2024-01205, -01206, -01207,

-01208, Paper 19, at 3-4 (U.S.P.T.O. Mar. 28, 2025);

see 35 U.S.C. 311(b) (limiting IPR to “prior art

consisting of patents or printed publications”).

Unexplained denials: The PTO has stopped issuing

explanations when denying IPR institution in most

cases. Memorandum from John A. Squires to All

PTAB Judges, Director Institution of AIA Trial

Proceedings (Oct. 17, 2025). 5 The PTO thus now

exercises the power to limit IPR availability on

grounds it does not even divulge to the parties (let

alone submit to review by a court).

All of the PTO’s new restrictions on IPR rewrite the

scheme Congress enacted. Not one appears in the statute.

And they contradict express congressional judgments.

For example, Congress addressed the time limits for IPR.

Congress made IPR available for any patent older than 9

months. 35 U.S.C. 311. And it permitted IPR petitions

5 https://www.uspto.gov/sites/default/files/documents/Director_

Institution_of_AIA_Trial_Proceedings.pdf.

11

parallel to district-court infringement litigation so long as

the petition is filed within one year of the district-court

complaint. 35 U.S.C. 315(b). Yet the PTO has now

rewritten those time limits. The agency has imposed its

own patent age cap with the “settled expectations”

doctrine, contrary to Congress’s judgment that no age cap

should apply. See Pet. 14-19; 35 U.S.C. 311. And the PTO

has imposed its own Fintiv time limit in relation to

district-court proceedings, which bars petitions that

Congress deemed timely. 35 U.S.C. 315(b).

The statute’s own authors have recognized that the

agency has rewritten their work. Senator Patrick Leahy

(a principal author of the Leahy-Smith America Invents

Act (“AIA”), which established IPR) has declared that the

PTO’s “unilateral decisions” have undermined the

statute—including the Fintiv requirement, which “go[es]

directly against Congress’s intent.” Patrick Leahy, New

USPTO rulemaking should seek to strengthen, not

weaken, the America Invents Act, The Hill, May 25, 2023. 6

Another AIA legislator has explained that the “settled

expectations” doctrine is “not within the discretion of the

Patent and Trademark Office.” Oversight of the U.S.

Patent and Trademark Office, at 15:04 (Mar. 25, 2026)

(Rep. Darrell Issa). 7 As another AIA legislator

summarized: under the PTO’s current approach to IPR,

“there are barriers that are being applied that Congress

never authorized.” Id. at 1:32:46 (Rep. Zoe Lofgren).

6

https://thehill.com/opinion/congress-blog/4020170-leahy-newuspto-rulemaking-should-seek-to-strengthen-not-weaken-theamerica-invents-act/.

7 https://judiciary.house.gov/committee-activity/hearings/

oversight-us-patent-and-trademark-office-2.

12

Even worse, the PTO has imposed these barriers by

pure agency fiat, without even the public input and

reasoned explanation that agency rulemaking ordinarily

entails. The PTO has repeatedly begun the rulemaking

process on IPR institution rules—only to abandon noticeand-comment in favor of unilateral agency decrees. For

example, in 2023, the agency issued an advance notice of

proposed rulemaking, which included proposals on the

Fintiv requirement, Sotera stipulations, and Fintiv’s

application to ITC proceedings. 88 Fed. Reg. 24,503,

24,513-516 (Apr. 21, 2023). It received a record-breaking

14,500-plus comments—which were overwhelmingly

negative. Unified Patents, The Public Has Spoken:

Stakeholders Overwhelmingly Oppose Proposed

Restrictions on Patent Trial and Appeal Board Review

(Sept. 5, 2023). 8 Yet rather than complete the rulemaking

process, the agency simply carried out its own preferred

policies on those subjects. See supra, at 6-10; see also, e.g.,

89 Fed. Reg. 28,693 (Apr. 19, 2024) (notice of proposed

rulemaking); 90 Fed. Reg. 48,342 (Oct. 17, 2025)

(withdrawing that proposed rulemaking); 90 Fed. Reg.

48,335 (Oct. 17, 2025) (another notice of proposed

rulemaking, which has not been finalized); Unified

Patents, The Public Has Spoken – Again: For a Second

Time, Stakeholders Overwhelmingly Oppose Agency

Proposals that Would Restrict Access to Inter Partes

Review (Dec. 18, 2025) 9 (noting that 97% of public

comments opposed the PTO’s latest proposed rules).

8 https://www.unifiedpatents.com/insights/2023/9/05/anprm

-public-comments.

9 https://www.unifiedpatents.com/insights/2025/12/17/the-publichas-spoken-again.

13

C. The PTO’s actions have upended IPR and

the patent system.

The practical consequences have been severe. In the

last year, as just explained, the PTO’s revisions to the IPR

scheme reached their apex—with a spate of new limits on

IPR availability, including the “settled expectations”

doctrine. See supra, at 8-10. This has had immediate,

measurable effect: the agency has choked off access to the

IPR system Congress established.

Previously, IPR was working well. For much of IPR’s

history, the PTO instituted IPR over 50% of the time, and

when it did, it found invalid patent claims in 60-80% of its

final decisions. Paul R. Gugliuzza & Mark A. Lemley,

Myths and Reality of Patent Law at the Supreme Court,

104 B.U. L. Rev. 891, 912-13 (2024). IPR was thus

cleansing the patent system of claims that never should

have been granted.

Now, IPR institution denials have skyrocketed. In

2025, the PTO denied more IPR petitions on non-merits

grounds than ever before. Unified Patents, Patent

Dispute Report: 2025 in Review (Jan. 13, 2026) (“2025

Report”). 10 And in the first quarter of this year, those

denials have surged 622.7% compared to the same time a

year ago. Unified Patents, Patent Dispute Report: Q1

2026 (Apr. 14, 2026) (“Q1 Report”). 11 Two years ago, the

PTO denied 32% of IPR petitions; now, it denies 63%.

Patent Trial and Appeal Board, PTAB Trial Statistics 7

10 https://www.unifiedpatents.com/insights/2026/1/13/patent-

dispute-report-2025-in-review.

11 https://www.unifiedpatents.com/insights/2026/4/14/patentdispute-report-q1-2026?rq=year%20in%20review.

14

(Apr. 2026) (“April 2026 PTAB Statistics”) 12; see also, e.g.,

Sarah Geers et al., An Empirical Dissection of

Discretionary Denials Following Bifurcation Policy, 25

Chi.-Kent J. Intell. Prop. 238, 245 (2026) (identifying a

“steep increase in AIA proceedings currently failing to

advance to institution”).

Meanwhile, the number of IPR petitions has

plummeted. Petitions have hit a historic low this year. Q1

Report. Before the PTO’s 2025 changes, 100 to 185 IPR

petitions were filed each month; last month, there were

only 15. April 2026 PTAB Statistics 5; Dennis Crouch,

Inter Partes Review in 2026, Patently-O (May 24, 2026)

(“The IPR system . . . is functionally suspended.”). 13 As

this reflects, the PTO has erected enough barriers that

many would-be petitioners have simply stopped trying.

Why spend tens of thousands of dollars on a

nonrefundable IPR “request fee” when the agency can

rewrite the rules at will? USPTO Fee Schedule, USPTO

(last revised May 1, 2026). 14

Those twin effects are squeezing IPR out of existence:

fewer IPR petitions are being filed, and the ones that do

12 https://www.uspto.gov/sites/default/files/documents/April_

2026_Trial_Statistics.pdf.

13 https://patentlyo.com/patent/2026/05/inter-partes-review-in-

2026.html.

14 https://www.uspto.gov/learning-and-resources/fees-andpayment/uspto-fee-schedule.

15

are more likely to be denied. And these dynamics in the

past year are unprecedented in the history of IPR:

Q1 Report.

This is disastrous for the Nation’s patent system. IPR

exists to cancel bad patents efficiently—unencumbering

the economy from patent monopolies that never should

have issued. Although there are other ways to challenge

patent validity, IPR plays an essential role. Without it,

Congress recognized, “questionable patents” were “too

easily obtained” and “too difficult to challenge.” H.R. Rep.

No. 112-98, at 39-40 (2011) (“House Report”). Patents can

be challenged in court, but Congress designed IPR

proceedings to be “quick and cost effective alternatives to

litigation.” Id. at 48 (emphasis added); see also S. Rep.

110-259, at 20 (2008) (“Senate Report”) (identifying the

need for “a quick, inexpensive, and reliable alternative to

district court litigation”). The PTO’s recent moves to

choke off access to IPR have deprived the public of those

benefits, which Congress considered imperative.

16

Even worse, restricting IPR benefits the very actors

most likely to generate costly litigation: non-practicing

entities, or NPEs. Congress established IPR to “improve

patent

quality

and

limit

unnecessary

and

counterproductive litigation costs.” House Report 40.

Congress was especially focused on the “consequences of

litigation by nonpracticing entities.” AIA, Pub. L. No. 11229 § 34, 125 Stat. 284, 340 (requiring study and

recommendations to “minimize any negative impact” of

NPE litigation). NPEs use patents to extract fees from

other companies, rather than using them to offer products

and services of their own. They drive much of the

country’s patent-infringement litigation. Last quarter, for

example, NPEs were responsible for 90.3% of high-tech

patent litigation. Q1 Report. IPR provides a crucial outlet,

allowing parties targeted by NPEs to challenge patent

validity more efficiently than clogging the courts with that

litigation. Seven of the top ten patent owners facing IPR

challenges last year were NPEs. 2025 Report.

The

PTO’s

recent

IPR

revisions

have

disproportionately favored NPEs, even compared to

other patentees. The new constraints on IPR bar the

challenges that are most likely to be brought against

NPEs: challenges where the patent has been asserted in

parallel litigation, and where the patent has lain dormant

for years until snatched up by an NPE. See supra, at 8-10

(describing PTO’s 2025 changes immunizing older patents

from IPR, requiring more onerous stipulations by parties

in parallel litigation, and abridging the “compelling

merits” exception to the parallel-litigation restriction on

IPR); infra, at 21-22 (NPEs are more likely to assert older

patents now immunized by the PTO’s “settled

expectations” doctrine); Pet. 6 (same).

17

It is now much harder to bring an IPR challenge to a

patent owned by an NPE than one owned by a company

that actually uses the patented technology:

2025 Report (“OpCo” means an operating company).

Again, the change in the past year has been

unprecedented.

*

*

*

The PTO has reshaped IPR dramatically and

unilaterally. The situation has grown especially dire in the

past year. Before the PTO continues to wield unchecked

power to rewrite a scheme so crucial to the patent system,

this Court’s review is urgently needed.

II.

The “settled expectations” constraint on IPR is

especially detrimental to the patent system.

The agency-devised “settled expectations” constraint

on IPR is a particularly consequential development warranting this Court’s review. The PTO has already invoked

18

it to deny hundreds of IPR petitions. 15 And its effects extend far beyond individual PTO proceedings. The doctrine

inflicts systemic harm, including in the following ways.

Protects weak patents. Most fundamentally, the “settled expectations” doctrine leaves invalid patents on the

books. It shields a category of patents from cancellation

in IPR based solely on their age—regardless of their validity. Indeed, the doctrine necessarily operates to preserve weak patents. Strong patents are already protected

against IPR institution by statute: institution is unavailable unless there is a “reasonable likelihood” of establishing invalidity. 35 U.S.C. 314(a). The “settled expectations”

doctrine makes a difference only where the challenge

clears that merits threshold. That is, the doctrine protects

patent claims with a reasonable likelihood of invalidity.

Leaving invalid patent monopolies in effect inflicts obvious harm on the patent system and the economy. And

that is equally true for the patents protected by the “settled expectations” doctrine based on their age: invalid patents do not become more innocuous the older they get.

That is the very reason Congress enacted IPR with no

maximum patent age: “No patent holder has a right to an

invalid patent, however long that patent holder may have

enjoyed that right inappropriately.” Senate Report 21;

see 35 U.S.C. 311.

Increases litigation. The “settled expectations” doctrine will clog federal courts with burdensome, unnecessary patent litigation. IPR exists to curb “unnecessary

and counterproductive litigation costs,” including by

providing a more efficient way to challenge patent

15 See Addendum to Brief of the Software & Information Industry

Association et al. as Amici Curiae, In re Kahoot! AS, No. 26-119 (Fed.

Cir. Jan. 2, 2026) (collecting cases).

19

validity. House Report 40, 48. By taking away IPR, the

“settled expectations” doctrine leaves parties with no way

to participate in a patent challenge other than to turn to

federal district court. And without IPR clearing away

weak older patents, abusive patent owners are more free

to bring baseless patent-infringement lawsuits. That is a

recipe for precisely the litigation burden on the federal

courts and productive companies that IPR was meant to

relieve.

Incentivizes unnecessary PTO filings. The “settled expectations” doctrine also risks clogging the PTO with unnecessary cases, by distorting incentives at the front end

of a patent’s life. Now that patents may only be challenged

in IPR early in their lives, parties have reason to seek IPR

preemptively based on speculation about future infringement risk.

This puts productive companies to a difficult choice.

Companies must decide today whether to challenge a patent that might not be asserted against them for years—

or ever. After all, with the “settled expectations” constraint taking force just six years into a patent’s twentyyear lifespan, would-be patent challengers must try to see

over a decade into the future. To decide whether to seek

IPR now to guard against infringement risk in the future,

a company must predict what products and services it

might offer in the future, whether they will be accused of

infringement, and whether it will be able to secure a license. Before, companies could wait to seek IPR until an

actual need arose; now under the “settled expectations”

doctrine, companies must bring IPRs based on guesswork.

These preemptive IPRs will also produce less reliable

results. Traditionally, the PTO’s final written decisions in

IPR are subject to validation in judicial review. See 35

20

U.S.C. 319. Not so for preemptive IPRs filed by petitioners with only speculative future infringement risk, who

will often lack Article III standing to appeal an adverse

outcome (yet still potentially be estopped from bringing

future claims by 35 U.S.C. 315(e)). See JTEKT Corp. v.

GKN Auto. LTD, 898 F.3d 1217, 1219-21 (Fed. Cir. 2018).

In those IPRs, the agency’s decisions will face no judicial

check.

Prejudices stakeholders from retroactive application.

Compounding the harm, the PTO imposed the “settled expectations” constraint without warning and retroactively.

Rather than applying the new doctrine prospectively to

new patents only, the PTO also applied it to patents that

had already reached the age of “settled expectations” before the doctrine was invented—instantly protecting

them from IPR challenge.

That retroactive application prejudices all those who

relied on the rules as they existed before. Previously, patent age had never weighed against IPR institution. Sara

Tonnies Horton et al., The Unsettling History of Settled

Expectations, 25 Chi.-Kent J. Intell. Prop. 252, 256-258

(2026). Stakeholders understood that they could wait to

seek IPR until the need arose; if they were accused of infringement, IPR would be available as Congress provided. But then the PTO pulled the rug, announcing both

that a deadline existed and that the deadline had already

passed. Contra Block v. N. Dakota ex rel. Bd. of Univ. &

Sch. Lands, 461 U.S. 273, 286 (1983) (“[S]tatutes of limitations must allow a reasonable time after they take effect

for the commencement of suits upon existing causes of action.” (citation and internal quotation marks omitted)).

This affects a huge swath of stakeholders: anyone who

would have challenged in IPR, now or in the future, any

patent more than six years old when the PTO announced

21

the “settled expectations” doctrine. It is too late for those

stakeholders to change their conduct by seeking IPR

sooner. They have all lost the chance at IPR, not knowing

that they needed to act before a then-non-existent deadline.

Aids NPEs. Perhaps most harmful of all, the “settled

expectations” doctrine disproportionately favors the most

detrimental uses of the patent system. The doctrine protects the very patents likely to be asserted by NPEs in

abusive litigation.

NPEs—especially the most abusive ones—assert

older patents. Empirical evidence shows that on average,

“NPEs do not obtain patents until the [twenty-year] patent term is half-spent and hold their patents for several

years more before filing suit, perhaps while waiting for

emerging industries to mature.” Brian J. Love, An Em-

pirical Study of Patent Litigation Timing: Could a Patent

Term Reduction Decimate Trolls Without Harming Innovators?, 161 U. Pa. L. Rev. 1309, 1334 (2013). Operating

companies, by contrast, assert patents earlier. Ibid.; see

also Lauren Cohen et al., Patent Trolls: Evidence from

Targeted Firms, 65 Mgmt. Sci. 5461, 5470 (2019) (“NPE-

asserted patents are significantly older than [practicing

entity]-asserted patents.”). Moreover, “NPE-asserted patents are the overwhelmingly dominant source of patent

litigation in the final years of the patent term.” Love, supra, at 1340. And that litigation is driven by “those NPEs

most associated with litigation abuse”: 92% of late-term

NPE suits are filed by “patent acquisition firms, firms

holding the IP remnants of failed companies, and inventor-affiliated licensing firms.” Ibid. In short, the older the

patent, the more likely it is to be asserted in abusive NPE

litigation.

22

Yet that is exactly what the “settled expectations” doctrine protects: the older the patent, the more the doctrine

insulates it from IPR challenge. And the PTO’s six-year

mark for “settled expectations” protection is long before

the average NPE even acquires a patent, let alone asserts

it. Love, supra, at 1334. The “settled expectations” doctrine thus distorts the playing field in favor of NPEs and

against the productive companies they target.

This agency-devised constraint is reshaping the patent landscape, with no authority from Congress and no

judicial review thus far. This threat to the integrity of the

patent system warrants this Court’s intervention.

CONCLUSION

The petition for a writ of certiorari should be granted.

Respectfully submitted.

ANGELA M. OLIVER

DEBRA J. MCCOMAS

HAYNES AND BOONE, LLP

Counsel of Record

888 16th Street, N.W., Ste. 300 MICHAEL F. QIAN

Washington, DC 20006

HAYNES AND BOONE, LLP

2801 N. Harwood Street, Ste. 2300

JONATHAN STROUD

Dallas, TX 75201

ROSHAN MANSINGHANI

(214) 651-5375

KELLY R. HUGHES

debbie.mccomas@haynesboone.com

UNIFIED PATENTS, LLC

1015 15th Street NW, Ste. 629

Washington, DC 20005

Counsel for Amicus Curiae

MAY 2026