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

Supreme Court briefMay 29, 2026

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No. 25-1230

In the

Supreme Court of the United States

GOOGLE LLC,

Petitioner,

VIRTAMOVE, CORP., ET AL.,

Respondents.

On Petition for Writ of Certiorari to the

U.S. Court of Appeals for the Federal Circuit

BRIEF OF THE PTAB BAR ASSOCIATION

AS AMICUS CURIAE IN SUPPORT OF

GRANTING OF CERTIORARI

Brenton R. Babcock

COUNSEL OF RECORD

Jason R. Mudd

Michelle E. Aspen

Yang Wang

PTAB Bar Association

1660 International Drive

Suite 600

McLean, VA 22102

(703) 570-8192

amicusbrief@ptabbar.org

QUESTIONS PRESENTED

1. Whether the PTO lacks statutory authority to

deny institution based on “settled expectations” where

the patent statutes allow for administrative review at

any time during the life of a patent.

2. Whether courts have power to review a PTO

decision denying inter partes review on grounds

that are contrary to statute.

TABLE OF CONTENTS

QUESTIONS PRESENTED .............................. i

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

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

IDENTITY AND INTEREST OF AMICUS

CURIAE ................................................................. 1

SUMMARY OF ARGUMENT........................... 3

REASONS FOR GRANTING THE WRIT .... 6

I. THE FEDERAL CIRCUIT HAS WRONGLY CLOSED

OFF ALL JUDICIAL REVIEW OF THE USPTO’S

STATUTORY OVERREACH ................................. 6

II. THE USPTO LACKS POWER TO ENACT THE

“SETTLED EXPECTATIONS” DOCTRINE ............. 8

III.THE “SETTLED EXPECTATIONS”

DOCTRINE INFLICTS SEVERE,

DOCUMENTED HARM ON INNOVATION,

COMPETITION, AND AMERICAN

COMMERCE ................................................. 13

IV. COMMENTATORS HAVE WIDELY

CRITICIZED THE “SETTLED

EXPECTATIONS” DOCTRINE AS HARMFUL

TO AMERICAN COMMERCE ....................... 17

iii

V. THE USPTO’S “SETTLED EXPECTATIONS”

DOCTRINE FOCUSES ON THE PATENT

HOLDER’S PURPORTED EXPECTATIONS

WHILE LARGELY IGNORING THE ACCUSED

INFRINGER’S EXPECTATIONS .................. 21

VI. THE USPTO’S SUPPLANTATION OF THE

LEGISLATIVE ROLE HAS RISEN TO THE LEVEL

OF A CONSTITUTIONAL ISSUE ........................ 24

CONCLUSION ....................................................... 28

TABLE OF AUTHORITIES

Page(s)

Cases

Almendarez-Torres v. U.S.,

523 U.S. 224 (1998)........................................... 27

Apple Inc. v. Gesture Tech. Partners, LLC,

129 F.4th 1367 (Fed. Cir. 2025) ....................... 10

Apple Inc. v. Gesture Tech. Partners, LLC,

IPR2021-00922, Paper 10 (PTAB Nov. 29, 2021)

........................................................................... 10

Apple Inc. v. Squires,

166 F.4th 1349 (Fed. Cir. 2026) ......................... 6

Corner Post, Inc. v. Bd. of Governors of Fed. Res.

Sys.,

603 U.S. 799 (2024)........................................... 10

Cuozzo Speed Techs., LLC v. Lee,

579 U.S. 261 (2016)................................. 5, 6, 7, 8

Dabico Airport Solutions Inc. v. AXA Power ApS,

IPR2025-00408, Paper 21 (PTAB June 18, 2025)

........................................................................... 22

Dalton v. Specter,

511 U.S. 462 (1994)........................................... 24

FDA v. Brown & Williamson Tobacco Corp.,

529 U.S. 120 (2000)........................................... 27

Loper Bright Enters. v. Raimondo,

603 U.S. 369 (2024)............................................. 5

Magnolia Med. Techs. Inc. v. Kurin, Inc.,

IPR2026-00097, Paper 17 (PTAB May 14, 2026)

........................................................................... 26

Mercoid Corp. v. Mid-Continent Investment Co.,

320 U.S. 661 (1944)........................................... 11

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

989 F.3d 1375 (Fed. Cir. 2021) ........................... 6

Oil States Energy Servs., LLC v. Greene’s Energy

Group, LLC,

584 U.S. 325 (2018)........................................... 23

Petrella v. Metro-Goldwyn-Mayer, Inc.,

572 U.S. 663 (2014)........................................... 11

SAS Institute Inc. v. Iancu,

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

SCA Hygiene Prods. Aktiebolag v. First Quality

Baby Prods., LLC,

580 U.S. 328 (2017)........................................... 11

In re Tesla, Inc.,

No. 2026-116, 2026 WL 555080 (Fed. Cir. Feb.

27, 2026) ............................................................ 24

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

590 U.S. 45 (2020)..................................... 6, 7, 11

United States v. Masonite Corp.,

316 U.S. 265 (1942)........................................... 12

Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc.,

853 F.3d 1272 (Fed. Cir. 2017) ......................... 10

West Virginia v. EPA,

597 U.S. 697 (2022)........................................... 27

Whitman v. Am. Trucking Assns., Inc.,

531 U.S. 457 (2001)........................................... 27

Yates v. United States,

574 U.S. 528 (2015)........................................... 25

Zadvydas v. Davis,

533 U.S. 678 (2001)............................................. 7

Statutes

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

35 U.S.C. § 311 ......................................................... 8

35 U.S.C. § 311(c) ..................................................... 9

35 U.S.C. § 314(a)............................................... 7, 25

35 U.S.C. § 314(c) ................................................... 25

35 U.S.C. § 314(d) ............................................ 5, 6, 7

35 U.S.C. § 315(b)..................................................... 9

35 U.S.C. § 315(e) ................................................... 26

35 U.S.C. § 321 ......................................................... 9

35 U.S.C. § 321(c) ................................................... 10

vii

35 U.S.C. § 325(d) .................................................. 25

America Invents Act

..............................3, 4, 6, 9, 13, 15, 18, 23, 25, 26

Other Authorities

153 Cong. Rec., No. 132, H10270 (Sept. 7, 2007) .. 13

157 Cong. Rec., No. 134, S1348 (Mar. 8, 2011) ..... 14

77 Fed. Reg. 7041 (Feb. 10, 2012) ......................... 25

83 Fed. Reg. 51341 (Oct. 11, 2018) ........................ 10

90 Fed. Reg. 48,335, Notice of Proposed

Rulemaking (Oct. 17, 2025) ................................ 2

https://finestoneinsurance.com/intellectual_propert

y/aipla-survey/................................................... 13

https://judiciary.house.gov/sites/evosubsites/republicansjudiciary.house.gov/files/evo-mediadocument/squires-testimony.pdf ...................... 16

https://patentlyo.com/media/2026/03/SquiresHearing-Transcript.pdf .................................... 27

https://patentlyo.com/media/docs/2009/03/wirelessc

om2005.pdf .......................................................... 8

https://patentlyo.com/patent/2023/12/patent-granttotal.html .......................................................... 22

viii

https://patentlyo.com/patent/2024/12/patent-grants2024.html .......................................................... 22

https://patentlyo.com/patent/2025/12/surprisingheadline-stability.html ..................................... 21

https://www.congress.gov/committee-report/112thcongress/house-report/98/1 ................................. 9

https://www.congress.gov/crs-product/R48016 ....... 9

https://www.law360.com/articles/2462484/congressmust-repair-uspto-s-inter-partes-review-process

........................................................................... 20

https://www.lexisnexisip.com/5g-report-2026/ ...... 13

https://www.unifiedpatents.com/insights/2026/1/13/

patent-dispute-report-2025-in-review.............. 19

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

........................................................................... 12

https://www.wipo.int/edocs/pubdocs/en/wipo-pub943-2025-en-wipo-ip-facts-and-figures-2025.pdf

........................................................................... 12

Jennifer Gallagher, The Public Has Spoken –

Again: For a Second Time, Stakeholders

Overwhelmingly Oppose Agency Proposals that

Would Restrict Access to Inter Partes Review,

Unified Patents (Dec. 18, 2025)

https://www.unifiedpatents.com/insights/2025/1

2/17/the-public-has-spoken-again .............. 18, 19

PTAB Bar Association, Comments on Notice of

Proposed Rulemaking: Revision to Rules of

Practice Before the Patent Trial and Appeal

Board (Docket No. PTO–P–2025–0025)

(Dec. 2, 2025). https://www.ptabbar.org/docs/

PTAB_Bar_Association_Response_to_NPRM_12

-2-2025.pdf. ................................................. 17, 18

Transcript of The House Judiciary Subcommittee

on Courts, Intellectual Property, Artificial

Intelligence, and the Internet, Oversight of the

U.S. Patent and Trademark Office (Mar, 25,

2026) .................................................................. 27

IDENTITY AND INTEREST OF

AMICUS CURIAE

Pursuant to Supreme Court Rule 37, the

PTAB Bar Association respectfully submits this

brief amicus curiae in support of granting the

Petition for Writ of Certiorari. 1

The PTAB Bar Association is a voluntary bar

association of more than 700 members dedicated

to preserving and promoting the highest

professional and ethical standards among

lawyers and stakeholders who appear before the

Patent Trial and Appeal Board (“PTAB”) of the

United States Patent and Trademark Office

(“USPTO”). The Association is the only

professional organization exclusively devoted to

legal practice before the PTAB.

The Association’s membership represents a broad

and balanced spectrum of participants in the patent

system, including counsel for inter partes review

(IPR) petitioners who challenge patents, counsel for

patent owners who defend patents, in-house

practitioners, and independent practitioners advising

Pursuant to this Court’s Rule 37.2, on May 19, 2026, all

parties with counsel listed on the docket received notice of

the Amicus Curiae’s intention to file this brief.

Pursuant to Rule 37.6, Amicus Curiae affirms that no

counsel for any party authored this brief in whole or in part,

and no counsel or party made a monetary contribution

intended to fund the preparation or submission of this brief.

No person other than Amicus Curiae, its members, or its

counsel made a monetary contribution to its preparation or

submission.

clients across the full range of PTAB proceedings. The

Association takes no position on the merits of any

particular patent dispute nor does it advocate on

behalf of any particular party. The Association’s

interest here is institutional: the proper functioning,

integrity, and lawful operation of the IPR system.

The Association is uniquely positioned to

inform

this

Court

about

the

practical

consequences of the PTO’s recently implemented

“settled expectations” doctrine and the Federal

Circuit’s unreviewability holdings. Members of the

Association have witnessed firsthand the dramatic

transformation of IPR practice since early 2025,

including the sharp decline in institution rates, the

inability to challenge patents over six years old, and

the refusal to provide a written basis for institution

decisions. The Association’s members’ observations

reflect the full impact of the USPTO’s policy shift on

all participants from different technology sectors, not

merely IPR petitioners.

The Association participated in the public

comment process surrounding the USPTO’s October

2025 Notice of Proposed Rulemaking (90 Fed. Reg.

48,335) and has monitored administrative and

judicial proceedings that frame the questions

presented here. The Association respectfully submits

this brief to provide the Court with the perspective of

the legal community that routinely appears before the

PTAB, a perspective that neither party’s brief can

fully supply.

SUMMARY OF ARGUMENT

This case presents an opportunity for the Court to

address an issue it has previously left open: what, if

any, is the scope of mandamus relief when the USPTO

violates the AIA? The Federal Circuit has answered

that only “colorable constitutional claims” are entitled

to relief and that it could not imagine that mandamus

would ever be appropriate. Here, the Court can clarify

that such relief is appropriate: i) when an agency’s

actions violate its statutory authority, and ii) when an

agency’s assumption of legislative power becomes a

constitutional issue.

The USPTO has contravened the America Invents

Act (“AIA”) and imposed a heretofore unannounced

“settled expectations” requirement. Under this

doctrine, the USPTO denies IPR petitions for patents

older than six years without analysis on the merits.

However, this denial is not a proper exercise of

administrative “discretion.” Instead, the agency’s new

quasi-statute of limitations is an unauthorized

rewriting of the AIA, which contradicts the statute’s

text, subverts its purpose, violates the Constitution,

inflicts documented harm on American innovation

and commerce, and, under the Federal Circuit’s

unreviewability ruling, escapes all judicial review.

Congress enacted the AIA in part because of

evidence that invalid patents—disproportionately

older patents held by non-practicing entities

(“NPEs”)—were imposing billions of dollars in

catastrophic costs on innovative American companies

and stifling competition across technology markets.

Congress deliberately designed IPRs to provide

efficient patent validity review for the very category of

patents the USPTO now insulates from challenge. The

“settled expectations” doctrine dismantles the AIA’s

solution at its foundations.

The USPTO lacks statutory authority to impose

this doctrine. Congress created inter partes review

under the AIA as a condition of the patent grant,

available throughout the patent’s entire term, with no

age-based cutoff. Congress knew precisely how to

create a patent-age cutoff, and did so for other types

of patent reviews, yet expressly omitted any such limit

for IPRs. An agency shall not override Congress’

considered policy judgment; age confers no valid

expectation of immunity from administrative review

of patent validity.

By substituting its own policy judgments for

Congress’, the USPTO’s new, extra-statutory doctrine

has usurped Congress’ legislative role, violating the

separation of powers inherent in the Constitution. The

USPTO’s actions, which have major economic and

political impact, are unconstitutional because this

Court presumes such actions are not authorized

absent clear Congressional authorization, which is

plainly lacking here.

The real-world consequences of the USPTO’s

unauthorized doctrine are severe and welldocumented. Invalid patents shielded from IPR

challenges function as permanent tollbooths on

technology that belongs to the public domain. NPEs

now have a roadmap for shielding bad patents from

administrative review: wait six years from issuance

before asserting dubious patents, then force

settlements from innovative companies that can no

longer efficiently challenge validity. Businesses across

technology-intensive industries face dramatically

elevated costs and uncertainty. The United States’

competitive position in global technology markets is

materially weakened.

The Federal Circuit’s holding that these harms are

entirely unreviewable is equally untenable. This

Court made clear in Loper Bright that courts retain

the obligation to “police the outer statutory

boundaries” of delegated agency authority. Loper

Bright Enters. v. Raimondo, 603 U.S. 369, 404 (2024).

Neither 5 U.S.C. § 701(a)(2) nor 35 U.S.C. § 314(d)

strips courts of power to determine whether the

USPTO has exceeded the statutory limits on its

discretion. This Court’s own language in Cuozzo and

SAS Institute preserved judicial review for precisely

the kind of statutory overreach at issue here. Cuozzo

Speed Techs., LLC v. Lee, 579 U.S. 261 (2016); SAS

Institute Inc. v. Iancu, 584 U.S. 357 (2018).

This Court’s review is urgently warranted. The

IPR process that Congress designed is being

systematically dismantled through administrative

fiat that, under the Federal Circuit’s view, is

effectively beyond judicial correction. The harm to

innovation, competition, and American commerce is

immediate, substantial, and growing. The Court

should grant certiorari and reverse.

REASONS FOR GRANTING THE WRIT

THE FEDERAL CIRCUIT HAS WRONGLY CLOSED

OFF ALL JUDICIAL REVIEW OF THE USPTO’S

STATUTORY OVERREACH

This Court has repeatedly recognized that no

agency operates beyond judicial review when it

encroaches power Congress withheld. Yet the Federal

Circuit has held precisely the opposite as to the

USPTO. It has held that mandamus is unavailable to

review denial-of-institution decisions absent a

“colorable constitutional claim,” Mylan Labs. Ltd. v.

Janssen Pharma., N.V., 989 F.3d 1375, 1382-83 (Fed.

Cir. 2021); that review of the USPTO’s discretionarydenial regime is unavailable because the regime is not

a “rule,” Apple Inc. v. Squires, 166 F.4th 1349, 135960 (Fed. Cir. 2026); and that direct appeal is foreclosed

by 35 U.S.C. § 314(d). The combined effect is to place

the USPTO’s recent consequential policy shift entirely

beyond judicial correction. In Thryv, this Court left

open “whether mandamus would be available in an

extraordinary case.” Thryv, Inc. v. Click-To-Call

Techs., LP, 590 U.S. 45, 54 n.6 (2020). This is that

case. Over the past year alone, the Federal Circuit has

denied thirteen mandamus petitions challenging the

USPTO’s new discretionary-denial practices, leaving

unchecked an unauthorized agency rewrite of the

AIA. This Court should grant certiorari to confirm

that mandamus is available where, as here, an agency

claims power Congress did not grant.

The Federal Circuit misinterprets Cuozzo in

construing its mandamus authority so narrowly in

light of 35 U.S.C. § 314(d). Cuozzo specifically

cautioned that its decision limiting appealability of

institution decisions under § 314(b) was not to be

interpreted as “enabl[ing] the agency to act outside its

statutory limits.” Cuozzo, 579 US at 275.

Moreover, “the extent of [an agency’s] authority is

not a matter of discretion.” Zadvydas v. Davis, 533

U.S. 678, 688 (2001). Both Thryv and Cuozzo, which

dealt with the application of the USPTO’s discretion

to institute under express statutory provisions, are

distinguishable from the case here, where the USPTO

has claimed unlimited discretion out of thin air.

Cuozzo specifically cautioned that such “shenanigans”

would not be immune from review. Cuozzo, 579 U.S.

at 275.

Beginning with the statutory language, the

USPTO and the Federal Circuit cite Section 314(a),

which describes what the agency “may not” do, to

conclude that the USPTO may do whatever it wants:

The Director may not authorize an inter partes

review to be instituted unless the Director

determines that the information presented in

the petition . . . and any response . . . shows that

there is a reasonable likelihood that the

petitioner would prevail with respect to at least

1 of the claims challenged in the petition.

35 U.S.C. § 314(a) (emphasis added).

Citing this provision, the USPTO has now claimed

the authority to deny petitions without any analysis

on the merits of the challenge. The USPTO cites no

other authority for its “discretionary” denial

framework. This Court has never interpreted the

word “may” as granting as much discretion as the

USPTO has claimed, let alone the phrase “may not.”

As discussed below, the USPTO’s recent shift

expanding its power to ignore Congressional

mandates based on a provision limiting its authority

has amounted to an unconstitutional usurpation of

the legislative role in clear disdain of Congress’

statutory framework. 2

This Court’s review is needed to correct the

Federal Circuit’s misapprehension of Cuozzo and

remove this extra-statutory tax on American

innovation.

II.

THE USPTO LACKS POWER TO ENACT THE

“SETTLED EXPECTATIONS” DOCTRINE

Congress designed inter partes review as a

patent validity challenge mechanism available to any

person at any time from nine months after issuance

throughout a patent’s term, and even after the patent

expires. See 35 U.S.C. § 311. This broad availability is

not merely a procedural footnote. Quite to the

contrary, it reflects a deliberate legislative choice to

permit validity challenges regardless of a patent’s age

or expired status. The USPTO’s “settled expectations”

doctrine directly contradicts Congress’ design of the

It not feasible to challenge every patent. Nor should it be

necessary. A landmark study of 7,796 patents from Goodman &

Myers (2005) — IEEE Conference Paper found that only 21%

declared

patents

actually

essential.

https://patentlyo.com/media/docs/2009/03/wirelesscom2005.pdf.

AIA and frustrates the core purpose of inter partes

review.

From the very first draft bills in 2005 through

the enacted AIA, Congress imposed only two time

restrictions on IPR petitions: (1) Under 35 U.S.C.

§ 311(c), the petitioner must wait at least nine

months after the patent issues, i.e., when a postgrant review (“PGR”) under 35 U.S.C. § 321 is no

longer available, before filing an IPR; and (2) if the

petitioner was served with an infringement

complaint, the petitioner must file within one year

of that service under 35 U.S.C. § 315(b). Neither

imposes any restriction based on a patent being “too

old.” Furthermore, House Report 112-98 on June 1,

2011, repeatedly distinguishes the narrow 9-month

window of PGR from the open-ended availability of

IPR thereafter. There is no mention of any maximum

patent age for IPR because Congress imposed none. 3

The Congressional Research Service (CRS)

explicitly summarized the timing restrictions to file

an IPR: “[a]n IPR petition, by contrast, may be filed

only after the window for filing PGR ends; that is,

an IPR must be filed more than nine months after

the patent issues (and after any PGR regarding the

patent concludes).” 4

The PTAB itself confirmed this principle when

holding that it has jurisdiction over expired

patents. Apple Inc. v. Gesture Tech. Partners, LLC,

https://www.congress.gov/committee-report/112thcongress/house-report/98/1.

https://www.congress.gov/crs-product/R48016.

IPR2021-00922, Paper 10 at 18 (PTAB Nov. 29,

2021) (“[T]he statutes governing inter partes

review do not limit them to non-expired

patents.”). The Federal Circuit subsequently

affirmed that “the Board has jurisdiction over IPRs

concerning expired patents.” Apple Inc. v. Gesture

Tech. Partners, LLC, 129 F.4th 1367, 1381 (Fed.

Cir. 2025).

Similarly, when adopting a rule changing the

claim construction standard in IPR proceedings to

align with that used by federal courts, the PTAB

reasoned that this rule was “consistent with the

same standard that the Office has applied in

interpreting claims of expired patents and soon-tobe expired patents.” 83 Fed. Reg. 51341 (Oct. 11,

2018) (citing Wasica Fin. GmbH v. Cont’l Auto. Sys.,

Inc., 853 F.3d 1272, 1279 (Fed. Cir. 2017)).

Therefore, the USPTO’s “settled expectations”

doctrine imposing an effective six-year statute of

limitations on IPR petitions directly conflicts with

Congressional design and consistent Federal Circuit

and PTAB jurisprudence, all of which confirm that

even a patent’s expiration (i.e., twenty years from the

earliest effective filing date) does not close the door to

inter partes review.

Congress knew how to create a maximum-agebased bar if it wanted to. For PGR, Congress imposed

a strict 9-month limit from the patent’s issuance after

which PGR is unavailable. 35 U.S.C. § 321(c). The

deliberate absence of any analogous maximum-agebased bar for IPR reflects a considered Congressional

judgment to impose no such bar—not a gap to be filled

by agency discretion. Corner Post, Inc. v. Bd. of

Governors of Fed. Res. Sys., 603 U.S. 799, 812 (2024).

Administrative agencies, like courts, cannot enforce

time limits that Congress declined to enact. See SCA

Hygiene Prods. Aktiebolag v. First Quality Baby

Prods., LLC, 580 U.S. 328, 334-35 (2017); Petrella v.

Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014).

This Court has long recognized that the patent

system exists to serve the public, not the patentee.

As this Court declared in Mercoid, “it is the public

interest which is dominant in the patent system,”

and it is precisely “the protection of the public in a

system of free enterprise which alike nullifies a

patent where any part of it is invalid.” Mercoid

Corp. v. Mid-Continent Investment Co., 320 U.S.

661, 665 (1944). That principle is not merely a

background norm, but an affirmative judicial duty.

A court that declines to scrutinize a patent’s

validity based on its age does not preserve stability.

Instead, as warned by this Court in Mercoid, such

a patent “would be diverted from its statutory

purpose and become a ready instrument for

economic control in domains where the anti-trust

acts or other laws not the patent statutes define the

public policy.” Id. at 666. Congress carefully designed

inter partes review to serve this very public interest

in “weed[ing] out bad patent claims efficiently.”

Thryv, 590 U.S. at 54. Patent owners thus have no

reasonable expectation that the age of a patent will

immunize its claims from public scrutiny.

The duty of scrutiny is reinforced by this Court’s

instruction that “since patents are privileges

restrictive of a free economy, the rights which

Congress has attached to them must be strictly

construed so as not to derogate from the general law

beyond the necessary requirements of the patent

statute.” United States v. Masonite Corp., 316 U.S.

265, 280 (1942). A doctrine placing older patents

beyond challenge subverts this command entirely.

Neither the statutes nor the courts have held that the

passage of time transforms an invalid patent into a

valid one, nor that judicial reluctance to disturb

settled arrangements may override the public’s

interest in a free and competitive economy. Where a

patent is invalid, its nullification is not an affront to

stability, but the fulfillment of the system’s purpose.

The claim that IPR proceedings against old

patents upset “settled expectations” collapses under

the weight of its own arithmetic. According to WIPO’s

IP Facts and Figures 2025, the United States had

approximately 3.5 million patents in force as of 2024. 5

Against that vast stock, the PTAB’s own official

FY2024 End of Year Roundup reports that a total of

just 1,288 petitions were filed in FY2024, the year

before Director Squires assumed the office and

implemented systematic, wholesale discretionary

denial changes to these more-than-decade-old

proceedings. 6 Thus, far less than 0.1% of all patents

in force were challenged at the PTAB in 2024. Nearly

all U.S. patents in force, including those that never

should have issued, were not being challenged in any

post-grant PTAB challenge at all. 7

https://www.wipo.int/edocs/pubdocs/en/wipo-pub-943-2025en-wipo-ip-facts-and-figures-2025.pdf.

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

ptab_aia_fy2024__roundup.pdf.

A recent survey by LexisNexis identified almost 500,000

III.

THE “SETTLED EXPECTATIONS” DOCTRINE

INFLICTS SEVERE, DOCUMENTED HARM

ON INNOVATION, COMPETITION, AND

AMERICAN COMMERCE

When the “settled expectations” doctrine

immunizes an invalid patent from IPR six years after

issuance, it functions as an indefinite toll on

technology that belongs in the public domain.

Companies operating in the relevant technological

space are forced to make the untenable choice between

seeking a license of invalid patents (paying a royalty

on technology they should be able to use freely),

endeavoring to design around them (diverting R&D

resources from genuine innovation into legally

motivated workarounds), or litigating the challenge in

district court at a cost approaching $6 million per

case. 8 Congress enacted the AIA solution because it

recognized the importance to the U.S. economy of

getting the answer to the patent validity question

correct and avoiding hugely expensive and resourceconsumptive district court litigation, in which lay

juries are required to digest complex technologies and

murky patent law. 153 Cong. Rec., No. 132, H10270,

H10271 (Sept. 7, 2007) (estimating that the value of

intellectual property in the US “amounts to $5 trillion,

and much of that is in the value of the patents that

come from the legislation produced by this bill”);

patents identified by their patent owners to be essential to

practice the 5G standard used by modern wireless phones.

https://www.lexisnexisip.com/5g-report-2026/.

https://finestoneinsurance.com/intellectual_property/aiplasurvey/.

H10272 (“weak patents and ‘seat-of-the-patents’

litigation has hurt the economy”); H10282 (observing

that patent licensing “contributes approximately $150

billion to our annual economy” and opining that the

reform was “the most important economic legislation

that this House will pass”); H10284 (lamenting

“baseless claims of infringement sapping billions from

economic growth”); 157 Cong. Rec., No. 134, S1348,

S1350 (Mar. 8, 2011) (PTAB judges “more likely to

reach the correct decision on a technical question”

compared to a jury of laypeople).

The Constitutional and statutory basis for the

patent monopoly rests on a basic quid pro quo: the

disclosure of a novel and nonobvious invention in

exchange for temporary and limited exclusivity. An

invalid patent, however, never satisfies its side of

the bargain. Allowing an invalid patent’s enforcement

under an age-based immunity does not protect a

legitimate innovation incentive; it privatizes public

knowledge and taxes those who use it, without any

corresponding public benefit.

The USPTO’s “settled expectations” doctrine

disproportionately benefits two categories of actors:

(1) NPEs who aggregate old patents without providing

the public with any valuable products or services, and

(2) large incumbent companies with aged patent

portfolios, both at the expense of innovative

competitors, new market entrants, and smaller

companies.

Large companies with extensive aged patent

portfolios now hold those portfolios as strategic

weapons

largely

immune

from

efficient

administrative challenge, while their newer

competitors’ patents remain fully exposed to

challenge. This administrative favoritism creates an

asymmetric competitive landscape that entrenches

incumbents and raises barriers to entry, which is

contrary to the spirit of market competition and

encourages unfair monopoly. The outcomes are

directly contrary to the competitive purposes the AIA

was designed to serve.

The credible opportunity of IPR proceedings has

provided critical leverage for innovators to resolve IP

disputes. When an accused infringer can credibly

address invalidity of an asserted patent with an IPR

petition, the patent holder must factor in the risk of

the patent’s invalidation. Under the USPTO’s “settled

expectations” doctrine, the accused infringer’s

leverage evaporates for patents over six years old,

enabling supra-competitive licensing demands that

innovative companies must absorb or litigate at

enormous expense.

The “settled expectations” doctrine imposes a

systemic uncertainty premium on every company

operating

patent-intensive

industries.

Businesses can no longer confidently assess their

freedom to operate when potentially invalid patents

over six years old cannot be efficiently challenged.

Investment

decisions,

product

development

roadmaps, supply chain contracts, and licensing

negotiations all carry elevated risk as a result.

The United States’ position as the world’s

leading technology innovator depends on a patent

system that rewards genuine invention while

efficiently clearing invalid patents that obstruct the

technology commons. The USPTO’s new “settled

expectations” doctrine systematically degrades that

function for the most consequential category of

patents.

In his March 25, 2026 testimony before the

House Judiciary Subcommittee, Director Squires

defended the “settled expectations” doctrine and

related PTAB changes as measures that promote

stability, certainty, and investment, asserting that

“investors invest when the rules are clear,

entrepreneurs take risks when the law affords

predictable-outcomes and innovators get in the game

when they know their ideas will be protected.” 9 He

also testified that the Director-alone institution

process “has promoted the consistent application of

the discretionary considerations for institution of

IPRs and PGRs, which has allowed the public to make

informed decisions about whether or not to challenge

a patent at the PTAB.” 10 Director Squires further

testified that these changes result in “reinvigorating

the reliability of patents from issuance increases

certainty, thereby enhancing trust in the patent

system which fosters investment, boosts U.S.

competitiveness and supports economic stability.” 11

However, contrary to the Director’s arguments,

the “settled expectations” doctrine, which

https://judiciary.house.gov/sites/evo-subsites/republicansjudiciary.house.gov/files/evo-media-document/squirestestimony.pdf.

Id.

effectively bars challenges to patents older than

approximately six years, has in practice

destabilized rather than stabilized the U.S.

economy by shielding invalid patents from review,

enabling patent holders to weaponize them against

innovators or extract nuisance settlements,

suppressed competition, and disproportionately

harmed smaller and newer companies that depend

on accessible, cost-effective patent challenges to

operate and innovate. As various organizations,

scholars, and practitioners have explained in detail

below,

the

doctrine

inflicts

documented,

measurable harm on American innovation and

commerce.

IV.

COMMENTATORS HAVE WIDELY

CRITICIZED THE “SETTLED EXPECTATIONS”

DOCTRINE AS HARMFUL TO AMERICAN

COMMERCE

As Amicus explained in its December 2, 2025

public comments to the USPTO’s Notice of Proposed

Rulemaking (“NPRM”), the non-statutory “settled

expectations” doctrine and the broader NPRM will

impose severe harm on competition, market entry,

and innovation by smaller companies. 12 The

Association warned that the proposed rules “will

likely significantly restrict access to AIA proceedings,

particularly IPRs, for companies with legitimate

PTAB Bar Association, Comments on Notice of Proposed

Rulemaking: Revision to Rules of Practice Before the Patent

Trial and Appeal Board (Docket No. PTO–P–2025–0025) (Dec. 2,

2025).

https://www.ptabbar.org/docs/PTAB_Bar_Association_

Response_to_NPRM_12-2-2025.pdf.

business concerns who seek to clear the way for future

investment or who seek lower-cost alternatives to

litigation.” 13 The Association explained that

companies “that bring new products to market,

including some life science companies with innovative

solutions that save and improve lives, rely on IPRs as

an economically reasonable alternative to costly

litigation,” meaning that “[r]estricting access to IPRs,

which were intended for that very purpose, will

increase the economic barrier to market entry, deter

investment in new products, or make products

unnecessarily costly for consumers and patients.” 14

Similarly, in its December 2025 analyses of the

public comments on the USPTO’s NPRM, Unified

Patents explained that Director Squires, “through

the continuation of Acting Director Stewart’s

‘settled expectations’ doctrine, has made IPR

virtually inaccessible to petitioners. This is in direct

contradiction of the America Invents Act and is

being implemented despite overwhelming evidence

that the ability to efficiently challenge patents has

enormous positive consequences for the American

innovation economy.” 15 Unified Patents further

explained that public opposition reflected deep

concern that the doctrine benefits “patent trolls”

Id.

Jennifer Gallagher, The Public Has Spoken – Again: For a

Second Time, Stakeholders Overwhelmingly Oppose Agency

Proposals that Would Restrict Access to Inter Partes Review,

Unified

Patents

(Dec.

18,

2025).

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

and litigation investors at the expense of legitimate

innovators and businesses; that it would have

negative implications for cornerstone sectors of the

economy,

auto

and

semiconductor

manufacturing, and would blunt innovation in

rapidly-growing areas, like AI and cryptocurrency;

and that it would make small- and medium-sized

businesses more vulnerable to abuse. 16

Indeed, data recently reported by Unified

Patents demonstrates that the USPTO’s sea change

in its discretionary denial practice, including its

“settled expectations” doctrine, has disproportionately

benefited NPEs over true innovators. 17 As of the end

of 2025, patents held by NPEs had a 20% lower PTAB

institution rate than patents owned by operating

companies who innovate and sell products—

undoubtedly because NPEs tend to assert much older

patents (shielded by “settled expectations”) than

innovator companies seeking to prevent competitors

from releasing products that infringe their patented

technology.

In their May 2026 Law360 expert analysis,

Professors Sean Tu (University of Alabama School

of Law), Arti Rai (Duke University School of Law),

and Aaron Kesselheim (Harvard Medical School),

examined a series of policy changes at the USPTO,

concluding that “the cumulative effect is a system

in which administrative review of patent validity is

both far less accessible and far less predictable than

Id.

https://www.unifiedpatents.com/insights/2026/1/13/patentdispute-report-2025-in-review.

Congress envisioned when it created the IPR

process as a fast, expert and transparent

mechanism for correcting erroneously granted

patents.” 18 The authors directly rebutted Director

Squires’ claim that his reforms promote economic

stability and innovation, documenting that

“[a]llowing invalid patents to avoid post-grant

review does more than harm consumers; it distorts

entire markets,” as “[s]tartups and small

businesses, which lack the resources for protracted

litigation, may abandon promising projects rather

than risk costly infringement suits,” while

“[i]ncumbent firms, meanwhile, use expansive

patent portfolios to deter competition and extract

settlements, lowering their incentive to innovate,”

so that “[t]he end result is a patent system that

rewards strategic behavior over true innovation”—

one that “protects incumbents and stifles

challengers.” 19 The authors concluded that “[i]f we

allow that to happen, innovation will stagnate,

protected by thickets of bad patents, while it

flourishes in other countries with more appropriate

systems for protecting intellectual property.” 20

https://www.law360.com/articles/2462484/congress-mustrepair-uspto-s-inter-partes-review-process.

Id.

THE USPTO’S “SETTLED EXPECTATIONS”

DOCTRINE FOCUSES ON THE PATENT

HOLDER’S PURPORTED EXPECTATIONS

WHILE LARGELY IGNORING THE ACCUSED

INFRINGER’S EXPECTATIONS

In promulgating the “settled expectations”

doctrine via agency memorandum—without seeking

any input from the relevant stakeholders or

rulemaking—the USPTO focused solely on the

purported expectations of the patent holder. But the

USPTO ignored the expectations of the public who are

engaged in commercial endeavors, and would become

patent challengers when accused of infringement.

Those engaged in commerce in a certain industry for

many years, without ever being put on notice of any

allegation that their products infringe an old patent,

certainly also have “settled expectations” that they

are not going to be haled into court on decade-old (or

older) technology. The USPTO only focuses on the

expectations of patent holders while ignoring the

settled expectations of market participants who have

never been placed on notice of the alleged relevance of

old technology to their products. The USPTO’s

doctrine, therefore, expects companies to know about

all potentially relevant patents without notice.

In the context of the competitive commercial

environment, the USPTO issued ~325,800 patents in

2025; 21 ~325,600 in 2024; 22 ~312,100 patents in

https://patentlyo.com/patent/2025/12/surprising-headlinestability.html.

Id.

2023; 23 and ~327,482 in 2022; 24 with a 2019 “high

point” at over 350,000. 25 The USPTO’s effective

requirement that commercial enterprises actively

monitor this continuous flood of new patents—over

25,000 per month—for early challenge is entirely

untenable. See Dabico Airport Solutions Inc. v. AXA

Power ApS, IPR2025-00408, Paper 21 at 3 (PTAB

June 18, 2025) (informative) (“[Patent applications

(after 18 months) and issued patents are almost

always publicly available to provide notice to the

public, other inventors, competitors, and commercial

interests.”). The legal resources required for any

company to continuously collect, consider, and

speculatively challenge such a large volume of patents

would be unfathomable.

In reality, for most patent disputes, the accused

infringer is entirely unaware of the asserted patent

until it is brought to their attention by the patent

holder, either via a cease-and-desist letter or, as is

frequently the case, in a lawsuit. In many instances,

the asserted patent appears to be facially unrelated to

the product(s) accused of infringement. In these

circumstances, the accused infringer reasonably

expected that it could invest in its product

development and market commercialization, with no

expectation that a patent infringement allegation was

waiting in the wings. Certainly, the USPTO should

consider any “settled expectations” of both parties and

https://patentlyo.com/patent/2023/12/patent-granttotal.html.

Id.

https://patentlyo.com/patent/2024/12/patent-grants2024.html.

not consider exclusively those of only the patent

holder to the exclusion of those of the accused

infringer, as the USPTO’s doctrine improvidently

does.

Moreover, the USPTO’s new application of

“settled expectations” based on the age of a patent

mistakes whose expectations the AIA is intended to

protect. Congress wrote no patent age limit into the

IPR statute, and for good reason: parties accused of

infringing an invalid patent (regardless of that

patent’s age) expect the IPR framework will provide

an opportunity to challenge that patent in an efficient

and cost-effective administrative proceeding. This

expectation is not a mere technicality, but a structural

guarantee to ensure that the patent monopoly does

not exceed what the public agreed to give in exchange

for the patent’s public disclosure. As this Court

confirmed in Oil States, patents are “the grant of a

public franchise. Inter partes review is simply a

reconsideration of that grant, and Congress has

permissibly reserved the PTO’s authority to conduct

that reconsideration.” Oil States Energy Servs., LLC

v. Greene’s Energy Group, LLC, 584 U.S. 325, 335

(2018). A patentee who received a grant subject to that

condition of reconsideration has never had, and

cannot now reasonably claim, a settled expectation

that the grant was permanent and unreviewable after

an arbitrary six years.

VI.

THE USPTO’S SUPPLANTATION OF THE

LEGISLATIVE ROLE HAS RISEN TO THE LEVEL OF

A CONSTITUTIONAL ISSUE

The next question this Court should address is

when the assumption of such unbounded, nonstatutory “discretion” rises to a Constitutional issue.

The Federal Circuit has indicated that violations of

the separation of powers are not colorable

constitutional claims because no one has a “right” to

an IPR. In support, the Federal Circuit expands this

Court’s holding in Dalton v. Specter, 511 U.S. 462

(1994), to suggest that an agency’s violations of the

separation of powers inherent in the Constitution are

not colorable constitutional claims. In re Tesla, Inc.,

No. 2026-116, 2026 WL 555080, at *1 (Fed. Cir. Feb.

27, 2026).

Here, the issue is not that the Director has

exceeded discretionary authority expressly given to

him by Congress. Rather, the issue is that the Director

purports to claim discretionary power that Congress

never gave. The USPTO accepted non-refundable IPR

fees only to deny petitions based on the retroactive

application of new extra-statutory “requirements”

after years of trying and failing to promulgate such

requirements as formal rules (which many

commenters explained were beyond the USPTO’s

statutory power to enact). The issue here, unlike

Dalton, is not just the Director’s abuses of discretion

(although there are those, too), but the assumption of

legislative power where none exists.

Here, the statutory framework demonstrates

Congress never envisioned that the USPTO would

read 35 U.S.C. § 314(a) as a grant of unlimited

discretion to modify the statutory requirements for

inter partes review. For example, Section 314(c)

mandates the Director to address the merits of a

petition in a written decision. 35 U.S.C. § 314(c) (“The

Director shall notify the petitioner and patent owner,

in writing, of the Director’s determination under

subsection (a), and shall make such notice available to

the public as soon as is practicable.”) (emphases

added). Over the last nine months, the USPTO has

ignored this section entirely and has been issuing

summary decisions that are silent on the merits, or

even the basis for discretionary denials.

This idea—that Section 314(a)’s lack of a mandate

from its use of “may not” (notwithstanding Section

314(c)) amounts to unlimited discretion to deny

meritorious and timely petitions—cannot be correct

because it “would render superfluous an entire

provision, Section 325(d), “passed in proximity as part

of the same Act.” Yates v. United States, 574 U.S. 528,

543 (2015). In Section 325(d), Congress enumerated

instances where the USPTO may, in its discretion,

deny otherwise meritorious petitions based on certain

related USPTO proceedings, such as those involving

substantially the same prior art or arguments. If

Section 314(a) were already embedded with unlimited

discretion, then Section 325(d) would be pointless.

Similarly, if the Director had the authority that the

USPTO now claims, Section 6(c)(2)(B) of the AIA

(providing that the Director may impose a limit on the

number of IPRs that may be instituted during the first

four years of the AIA) would have been entirely

unnecessary. 77 Fed. Reg. 7041, 7044 (Feb. 10, 2012).

In fact, Congress has already spoken on much of

what the USPTO has identified for its dispositive

“discretionary policies.” As mentioned, Congress set

an upper age for challengeable patents for PGRs at

nine months, but not for IPRs. Congress only set a

lower age limit on IPRs. While Congress set a oneyear litigation-related deadline for filing IPRs, the

USPTO has effectively set a “faster-than-time-totrial” deadline under Fintiv, finding that petitioners

(who cannot control whether or not a district court will

stay a proceeding) “misuse” the AIA by

simultaneously

defending

themselves

while

petitioning for IPR. Magnolia Med. Techs. Inc. v.

Kurin, Inc., IPR2026-00097, Paper 17 at 3 (PTAB May

14, 2026) (precedential). The USPTO has also

indicated that it will bias its discretion against

foreign-backed petitioners (but not necessarily

foreign-backed patent owners) even though Section

311 confirms broadly that “a[ny] person who is not the

owner of a patent” may seek review. Id. at 8. Although

Congress already created an estoppel provision

triggered by a final written decision in 35 U.S.C.

§ 315(e), the USPTO demanded more and began

requiring certain petitioners to stipulate to a higher

estoppel standard as a condition of institution. Now,

some petitioners are meeting all of these new

requirements and paying a nearly $25,000 IPR filing

fee for the privilege of hearing only of the Director’s

discretionary denial, devoid of any explanation.

The structure of the AIA does not support the

USPTO’s position that a statutory limitation on its

power in a section entitled “Threshold” gave the

USPTO unlimited authority to rewrite the statute’s

requirements for who may file a petition, by when

they have to file it, or under what conditions it could

be considered. Almendarez-Torres v. U.S., 523 U.S.

224, 234 (1998). If Congress wanted to give the

USPTO broad discretion to consider the age of the

patent or the pace of related district court

proceedings, it knew how to do so. Whitman v. Am.

Trucking Assns., Inc., 531 U.S. 457, 468 (2001).

(“Congress … does not hide elephants in

mouseholes.”).

The USPTO’s recent rules will have (and have had)

far-reaching economic and political impacts despite no

clear statement from Congress that the USPTO had

the authority to make the rules in the first place. See

Tr. of The House Judiciary Subcommittee on Courts,

Intellectual Property, Artificial Intelligence, and the

Internet, Oversight of the U.S. Patent and Trademark

Office (Mar. 25, 2026), at 17 (Rep. Hank Johnson,

Ranking Member: “And you're doing it, uh, based on

executive

authority,

undermining

legislative

authority.”) (emphasis added). 26 Under the “major

questions” doctrine, courts presume that Congress

does not delegate decisions of vast “economic and

political significance to an agency” using vague,

subtle, or cryptic terms. West Virginia v. EPA, 597

U.S. 697, 729-30 (2022) (citing, e.g., FDA v. Brown &

Williamson Tobacco Corp., 529 U.S. 120, 160 (2000));

see also id. at 735 (Gorsuch, J., concurring and

summarizing). Both the USPTO and Federal Circuit

should, therefore, be reluctant to interpret Section

314(a)’s statutory limit on the Director’s authority as

a legislative delegation of vast discretionary authority

https://patentlyo.com/media/2026/03/Squires-HearingTranscript.pdf.

to rewrite the scope and availability of IPRs. The

USPTO cannot shield its shenanigans from judicial

review simply by labeling its unauthorized actions as

the exercise of “discretion.”

CONCLUSION

For the reasons stated above, the Petition for

Writ of Certiorari should be granted and the Federal

Circuit should be reversed.

DATED: May 29, 2026

Respectfully submitted,