Petition for Writ of Certiorari — Tesla, Inc., Petitioner v. Granite Vehicle Ventures LLC, et al.

Supreme Court briefJul 27, 2026

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No. _____

In the Supreme Court of the United States

TESLA, INC.,

Petitioner,

GRANITE VEHICLE VENTURES LLC, ET AL.,

Respondents.

ON PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

PETITION FOR A WRIT OF CERTIORARI

ANGELA M. OLIVER

DEBRA J. MCCOMAS

HAYNES AND BOONE, LLP MICHAEL F. QIAN

888 16th Street, N.W., Ste. 300 Counsel of Record

Washington, DC 20006

HAYNES AND BOONE, LLP

2801 N. Harwood Street, Ste. 2300

ASHRAF FAWZY

Dallas, TX 75201

PAUL MARGULIES

(214) 651-5041

TESLA, INC.

michael.qian@haynesboone.com

800 Connecticut Avenue NW

5th Floor

Washington, DC 20006

QUESTION PRESENTED

Congress created inter partes review (“IPR”) to give

the public an efficient way to challenge patents that

should never have issued. Congress specified the criteria

governing whether the U.S. Patent and Trademark Office

(“PTO”) institutes review.

Here, the PTO refused to institute review for a reason

found nowhere in any statute: the expected time to trial in

separate district court litigation. The Federal Circuit held

that judicial review is unavailable to decide whether the

agency exceeded its authority by devising extra-statutory

limits on IPR.

The question presented is:

Whether courts have power to review a PTO decision

denying inter partes review on grounds that are contrary

to statute, like an extra-statutory restriction based on

time to trial in separate litigation.

PARTIES TO THE PROCEEDINGS BELOW

Petitioner Tesla, Inc. was the petitioner below.

Petitioner trades under the ticker symbol TSLA on the

NASDAQ exchange.

Respondents Granite Vehicle Ventures LLC and John

A. Squires, Under Secretary of Commerce for Intellectual

Property and Director of the United States Patent and

Trademark Office, were respondents below.

RULE 29.6 STATEMENT

Petitioner Tesla, Inc. has no parent corporation, and

no publicly held company owns 10% or more of its stock.

RELATED PROCEEDINGS

In re Tesla, Inc., No. 2026-116 (Fed. Cir. Feb. 27,

2026).

iii

TABLE OF CONTENTS

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

PARTIES TO THE PROCEEDINGS BELOW .......... ii

RULE 29.6 STATEMENT .......................................... ii

RELATED PROCEEDINGS ...................................... ii

TABLE OF CONTENTS ........................................... iii

TABLE OF AUTHORITIES ........................................ v

PETITION FOR A WRIT OF CERTIORARI .............1

OPINIONS BELOW ....................................................1

JURISDICTION ..........................................................1

STATUTE INVOLVED ...............................................1

INTRODUCTION ........................................................2

STATEMENT OF THE CASE ....................................4

Legal Background ..................................4

Proceedings Below .................................8

REASONS FOR GRANTING THE PETITION .......11

The Federal Circuit’s decision wrongly

forecloses judicial review. ...............................11

The Federal Circuit has left the

PTO free to devise limits on IPR

beyond its authority. ............................11

The Federal Circuit’s approach is

contrary to 35 U.S.C. §314(d) and

this Court’s decisions interpreting

it. ...........................................................14

The Federal Circuit’s approach

cannot be justified by 5 U.S.C.

§701(a)(2) and rests on an

erroneous view of the PTO’s

discretion. .............................................17

II.

The question presented is exceptionally

important, and the need for review has

grown even more urgent in recent years. ......22

III.

This case is an ideal companion to Google

and Intel. .........................................................29

CONCLUSION ..........................................................30

TABLE OF AUTHORITIES

Page(s)

Cases

Apple Inc. v. Fintiv, Inc.,

IPR2020-00019, 2020 WL 2126495 (P.T.A.B.

Mar. 20, 2020) ............................................................ 5, 6

Apple Inc. v. Squires,

166 F.4th 1349 (Fed. Cir. 2026) ........................... 19, 21

Apple Inc. v. Vidal,

63 F.4th 1 (Fed. Cir. 2023) ......................................... 12

Bowen v. Michigan Acad. of Family Physicians,

476 U.S. 667 (1986) ...................................................... 14

Brown v. Davenport,

596 U.S. 118 (2022) ...................................................... 22

In re Cambridge Indus. USA Inc.,

No. 2026-101, 2025 WL 3526129 (Fed. Cir.

Dec. 9, 2025) .................................................................. 13

Citizens to Pres. Overton Park, Inc. v. Volpe,

401 U.S. 402 (1971) ...................................................... 18

Cuozzo Speed Techs., LLC v. Lee,

579 U.S. 261 (2016) ................................2, 14, 15, 16, 21

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

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

18, 2025) ........................................................................... 7

Farmworker Justice Fund, Inc. v. Brock,

811 F.2d 613 (D.C. Cir. 1987)..................................... 18

In re Google LLC,

No. 2025-144, 2025 WL 3096849 (Fed. Cir.

Nov. 6, 2025) ................................................................. 13

In re Google LLC,

No. 2026-111, 2026 WL 204945 (Fed. Cir.

Jan. 27, 2026) ................................................................ 13

Heckler v. Chaney,

470 U.S. 821 (1985) ...................................................... 18

In re HighLevel, Inc.,

No. 2025-148, 2025 WL 3527144 (Fed. Cir.

Dec. 9, 2025) .................................................................. 13

Illinois v. Lidster,

540 U.S. 419 (2004) ...................................................... 21

In re Intel Corp.,

No. 2026-113, 2026 WL 506045 (Fed. Cir.

Feb. 24, 2026) ............................................................... 13

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

IPR2025-00794, Paper 13 (U.S.P.T.O. Aug.

14, 2025) ........................................................................... 7

In re Kahoot! AS,

No. 2026-119, 2026 WL 519635 (Fed. Cir.

Feb. 25, 2026) ............................................................... 13

vii

In re Kangxi Commc’n Techs. (Shanghai) Co.,

No. 2026-115, 2026 WL 506927 (Fed. Cir.

Feb. 24, 2026) ............................................................... 13

Loper Bright Enters. v. Raimondo,

603 U.S. 369 (2024) ................................................ 14, 18

In re Motorola Sols., Inc.,

159 F.4th 30 (Fed. Cir. 2025) ..................................... 12

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

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

Paper 19 (U.S.P.T.O. Mar. 28, 2025) .................... 6, 25

Mylan Lab’ys Ltd. v. Janssen Pharmaceutica,

N.V.,

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

.................................................... 10, 11, 12, 17, 19, 20, 29

Nat’l Fed’n of Indep. Bus. v. Dep’t of Labor,

595 U.S. 109 (2022) (per curiam) ............................... 14

NHK Spring Co. v. Intri-Plex Techs., Inc.,

IPR2018-00752, 2018 WL 4373643 (P.T.A.B.

Sept. 12, 2018) ............................................................... 5

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

Energy Grp., LLC,

584 U.S. 325 (2018) ...................................................... 21

Olivier v. City of Brandon,

607 U.S. 552 (2026) ...................................................... 21

Rodriguez v. Mayorkas,

2024 WL 4023841 (2d Cir. Sept. 3, 2024) ................. 19

In re Sandisk Techs., Inc.,

viii

No. 2025-152, 2025 WL 3526507 (Fed. Cir.

Dec. 9, 2025) .................................................................. 13

In re SAP Am., Inc.,

No. 2025-132, 2025 WL 3096788 (Fed. Cir.

Nov. 6, 2025) ................................................................. 13

SAP Am., Inc. v. Cyandia, Inc.,

IPR2024-01495, Paper 13 (U.S.P.T.O. Apr.

7, 2025) ............................................................................. 6

SAS Inst., Inc. v. Iancu,

584 U.S. 357 (2018) ........................................ 2, 4, 14, 16

Sotera Wireless, Inc. v. Masimo Corp.,

IPR2020-01019, 2020 WL 7049373 (P.T.A.B.

Dec. 1, 2020) ................................................................... 6

St. Jude Med., Cardiology Div., Inc. v. Volcano

Corp.,

749 F.3d 1373 (Fed. Cir. 2014) .................................. 12

Tesla, Inc. v. Intellectual Ventures II LLC,

IPR2025-00340, Paper 18 (U.S.P.T.O. Nov.

5, 2025) ............................................................................ 7

In re Tessell, Inc.,

No. 2026-117, 2026 WL 505597 (Fed. Cir.

Feb. 24, 2026) ............................................................... 13

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

590 U.S. 45 (2020) ..................................4, 15, 16, 22, 27

Tianma Microelectronics Co. v. LG Display

Co.,

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

18, 2026) ........................................................................ 24

Turkiye Halk Bankasi A.S. v. United States,

598 U.S. 264 (2023) ...................................................... 22

United States v. Arthrex, Inc.,

594 U.S. 1 (2021) .......................................................... 21

In re Volkswagen Grp. of Am., Inc.,

No. 2026-123, 2026 WL 776550 (Fed. Cir.

Mar. 19, 2026) ............................................................... 13

W. Virginia v. Env’t Prot. Agency,

597 U.S. 697 (2022) ...................................................... 26

Ward v. Skinner,

943 F.2d 157 (1st Cir. 1991) ....................................... 18

Webgroup Czech Republic, A.S. v. DISH

Techs. LLC,

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

16, 2025) ........................................................................... 7

Weyerhaeuser Co. v. U.S. Fish & Wildlife

Serv.,

586 U.S. 9 (2018) .......................................................... 18

Statutes

5 U.S.C. §701............................................................. 2, 17, 18

28 U.S.C. §1254 .................................................................... 1

28 U.S.C. §1651 .................................................................. 10

35 U.S.C. §311 .......................................................... 4, 16, 19

35 U.S.C. §312 ................................................................ 4, 16

35 U.S.C. §313 ................................................................ 4, 19

35 U.S.C. §314(a)

......................................................................... 4, 19, 20, 28

35 U.S.C. §314(d)

........................................ 1, 2, 4, 11, 14, 15, 16, 21, 23, 29

35 U.S.C. §315

................................................ 4, 5, 8, 9, 15, 19, 20, 21, 27

35 U.S.C. §316 ...................................................................... 4

35 U.S.C. §317 ...................................................................... 4

35 U.S.C. §318 ...................................................................... 4

35 U.S.C. §319 ...................................................................... 4

35 U.S.C. §325 .................................................... 5, 19, 20, 21

Leahy-Smith America Invents Act, Pub. L. No.

112-29, 125 Stat. 284 ...................................................... 4

Other Authorities

153 Cong. Rec. H10284 (daily ed. Sept. 7, 2007) .......... 22

157 Cong. Rec. S1363 (daily ed. Mar. 8, 2011) ............. 23

88 Fed. Reg. 24,503 (Apr. 21, 2023) .................................. 7

89 Fed. Reg. 28,693 (Apr. 19, 2024) .................................. 7

90 Fed. Reg. 48,335 (Oct. 17, 2025) ................................... 7

90 Fed. Reg. 48,342 (Oct. 17, 2025) ................................... 7

Andrew T. Dufresne et al., How Reliable Are

Trial Dates Relied on by the PTAB in the

Fintiv Analysis?, 1600 PTAB & Beyond (Oct.

29, 2021),

https://ptacts.uspto.gov/ptacts/publicinformations/petitions/1549571/downloaddocuments?artifactId=-gkf8A2TF7hsdxNifHFg76hHBTqxMt3MHqAUjGLGrmBdauZ

mYmDXAA

.................................................................................... 9, 28

Dennis Crouch, An Era of No: The USPTO’s

New 0% Institution Rate, Patently-O (Nov.

12, 2025), https://perma.cc/FW4H-QVBC ............... 25

Dennis Crouch, Inter Partes Review in 2026,

Patently-O (May 24, 2026),

https://perma.cc/CJE3-AUST ................................... 25

Eileen McDermott, USPTO Stats Show IPR

Institution Rate Has Plummeted by 43%,

IP Watchdog (Apr. 8, 2026),

https://perma.cc/5MLQ-E3HL ................................... 8

H.R. Rep. No. 112–98, pt. 1 (2011) .............................. 4, 27

xii

Josh Landau, Inter Partes Review: Five Years,

Over $2 Billion Saved, Patent Progress

(Sept. 14, 2017), https://perma.cc/7HPGZ4DF.............................................................................. 23

Matthew Johnson, Discretionary Decision

Statistics Update, PTAB Litigation Blog

(Nov. 4, 2025), https://perma.cc/7DVQAXVM .................................................................. 6, 28, 29

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://perma.cc/M4AV-X8YP............................... 5, 24

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://perma.cc/YG4XTWV6 ....................................................................... 24, 25

Patent Dispute Report: Q1 2026 (Apr. 14,

2026), https://perma.cc/SX8X-P2YF ........................ 25

Patent Trial and Appeal Board, Parallel

Litigation Study (June 2022),

https://perma.cc/74YK-AS8Y .................................... 28

PETITION FOR A WRIT OF CERTIORARI

Petitioner Tesla, Inc. respectfully petitions for a writ

of certiorari to review the judgment of the U.S. Court of

Appeals for the Federal Circuit.

OPINIONS BELOW

The opinion of the court of appeals (App. 1a-3a) is

available at 2026 WL 555080. The opinions of the Patent

and Trademark Office denying Tesla’s petitions for inter

partes review (App. 4a-7a, 8a-10a) are not reported.

JURISDICTION

The Federal Circuit entered judgment on

February 27, 2026. On May 26, 2026, the Chief Justice

granted petitioner’s application to extend the time to file

a petition for a writ of certiorari until July 27, 2026. The

jurisdiction of this Court is invoked under 28 U.S.C.

§1254(1).

STATUTE INVOLVED

Section 314 of Title 35 of the U.S. Code provides in

relevant part:

(d) NO APPEAL.—The determination by

the Director whether to institute an inter

partes review under this section shall be

final and nonappealable.

INTRODUCTION

The Federal Circuit has left the PTO free to exceed its

statutory limits, with no judicial review. That extraordinary result is wrong, harms the Nation’s patent system,

and urgently warrants this Court’s review.

IPR is a way of challenging bad patents. Congress designed a detailed scheme governing when IPR is available. The PTO has now devised its own constraints on

IPR’s availability, found nowhere in any statute. The PTO

denies IPR petitions, for example, based on the time to

trial in separate litigation involving the patent—a criterion Congress never mentioned.

According to the Federal Circuit, no court may even

ask whether PTO-invented grounds for denying IPR are

within the agency’s statutory authority. The matter is beyond judicial review. The PTO can ignore or rewrite Congress’s scheme without consequence. The PTO can impose any IPR constraint it wishes—it could deny all IPR

petitions filed on Tuesdays—and courts must look the

other way.

That is wrong. The Federal Circuit’s unreviewability

holding rests on 35 U.S.C. §314(d), which bars appeal of

“[t]he determination by the [PTO] Director whether to institute an inter partes review.” But this Court has repeatedly held that “§314(d) does not ‘enable the agency to act

outside its statutory limits.’” SAS Inst., Inc. v. Iancu, 584

U.S. 357, 371 (2018) (quoting Cuozzo Speed Techs., LLC

v. Lee, 579 U.S. 261, 275 (2016)). Yet that is just the type

of challenge the Federal Circuit foreclosed here. The Federal Circuit has also mistakenly invoked 5 U.S.C.

§701(a)(2), which bars review of matters committed to

agency discretion. That does not bar review of what discretion the agency has in the first place. Moreover, the

PTO’s discretion here is not nearly as broad as the Federal Circuit has assumed. Congress specified the criteria

for IPR institution and conferred agency discretion in

specific areas; the statute never authorizes the PTO to

supplant Congress’s scheme with its own.

Arming the PTO with extraordinary, unreviewable

power has had severe consequences—especially in the

last two years. The PTO has reshaped IPR, imposing one

new extra-statutory limit after another. Stakeholders

must now expect IPR to be upended afresh at the whim of

every new PTO Director. In 2025, the agency embarked

on its most sweeping rewrite of IPR limits yet, and the

effects have been unprecedented. IPR institution rates

have collapsed in half, and IPR petition filings are down

85%. The agency is gutting the IPR scheme Congress

built. This Court’s review is needed now more than ever.

This petition joins two already-pending petitions in

presenting the question whether the PTO is subject to

judicial review when it denies inter partes review on

grounds that are contrary to statute. See Google LLC v.

VirtaMove, Corp., No. 25-1230 (filed Apr. 27, 2026,

response requested June 12, 2026); Intel Corp. v. Squires,

No. 26-73 (filed July 13, 2026). 1 Together, these cases

present the reviewability question in every relevant

1 Another related petition appears to be forthcoming but was not

yet docketed as of the filing of this petition. See Kahoot! AS v.

Interstellar Inc., No. 25A1279 (application granted extending time to

file until July 25, 2026).

procedural posture—and in the context of the two most

consequential IPR limits the PTO has devised. This case

is an ideal companion to those cases for resolving this

exceptionally important, urgent issue.

STATEMENT OF THE CASE

Legal Background

1. In 2011, Congress established IPR “to weed out bad

patent claims efficiently.” Thryv, Inc. v. Click-To-Call

Techs., LP, 590 U.S. 45, 54 (2020); see Leahy-Smith

America Invents Act (“AIA”), Pub. L. No. 112-29, 125

Stat. 284. IPR “allows private parties to challenge

previously issued patent claims in an adversarial process

before the Patent Office.” SAS Inst., Inc. v. Iancu, 584

U.S. 357, 359 (2018). This process is meant to be a “cost

effective alternative[] to litigation” over patent validity.

H.R. Rep. No. 112–98, pt. 1, at 40, 48 (2011).

Congress set out a detailed scheme governing IPR

and charged the PTO with administering it. See 35 U.S.C.

§§311-319. Any patent challenger can file “a petition to

institute an inter partes review of the patent.” §311(a).

The PTO “shall determine whether to institute an inter

partes review.” §314(b). If IPR is instituted, the PTO

proceeds to “a final written decision with respect to the

patentability of any patent claim challenged” and cancels

any invalid claims. §318(a), (b).

Congress specified the criteria for whether to institute

IPR. Section 314(a) sets the core merits threshold: the

Director “may not authorize an inter partes review to be

instituted unless” there is “a reasonable likelihood that

the petitioner would prevail” on at least one challenged

claim. §314(a). Beyond that threshold, Congress added a

set of reticulated limits. Some are firm bars, like a

requirement that the petition be filed no earlier than “9

months after the grant of a patent.” §311(c)(1). Others

give the PTO discretionary authority, like a provision

specifying that “the Director may take into account

whether, and reject the petition . . . because, the same or

substantially the same prior art or arguments previously

were presented to the Office.” §325(d).

Specific provisions also govern the interaction

between IPR and district court litigation involving the

same patent. See §315. Even more specifically, Congress

addressed when an IPR petition would be timely in

relation to infringement litigation against the petitioner:

the petition must be filed within one year after the

petitioner is served with the complaint. §315(b).

2. Nearly a decade after Congress established IPR,

the PTO devised a new ground for denying IPR

institution: proximity to trial in separate litigation

involving the patent. The agency created that limit on IPR

without notice-and-comment rulemaking; it simply

announced the limit in unilateral decisions and

memoranda. NHK Spring Co. v. Intri-Plex Techs., Inc.,

IPR2018-00752, 2018 WL 4373643, at *7 (P.T.A.B.

Sept. 12, 2018) (designated precedential May 7, 2019);

Apple Inc. v. Fintiv, Inc., IPR2020-00019, 2020 WL

2126495, at *2 (P.T.A.B. Mar. 20, 2020) (designated

precedential May 5, 2020); see also, e.g., 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) 2 (“Vidal Memo”).

This agency-devised constraint (the “Fintiv rule”) has

transformed IPR practice. The PTO has denied hundreds

of IPR petitions on that ground. See Matthew Johnson,

Discretionary Decision Statistics Update, PTAB

Litigation Blog (Nov. 4, 2025) (218 denials over 5-month

period in 2025 alone). 3

And the PTO has grafted various other criteria onto

the time-to-trial rule. The PTO has fashioned a set of

factors to govern its bottom-line decision whether to use

an “earlier trial date[] as a basis for denial.” Fintiv, 2020

WL 2126495, at *2. The PTO also allows IPR petitioners

to avoid denial on time-to-trial grounds if they surrender

certain arguments in district court litigation (a “Sotera

stipulation”). See Sotera Wireless, Inc. v. Masimo Corp.,

IPR2020-01019, 2020 WL 7049373, at *7 (P.T.A.B. Dec.

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

Dec. 17, 2020). More recently, the PTO has pushed IPR

petitioners to give up invalidity defenses in Article III

courts even when those defenses cannot be raised in IPR,

such as those based on system art. Motorola Sols., Inc. v.

Stellar, LLC, IPR2024-01205, -01206, -01207, -01208,

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

v. Cyandia, Inc., IPR2024-01495, Paper 13, at 8-9

(U.S.P.T.O. Apr. 7, 2025).

The PTO has also devised other new grounds for

denying institution—many introduced in the last two

2 https://perma.cc/M4AV-X8YP.

https://perma.cc/7DVQ-AXVM.

years. It now denies institution, for example, when the

patent is old enough to have engendered “[s]ettled

expectations.” Memorandum from Coke Morgan Stewart

to All PTAB Judges, Interim Processes for PTAB

Workload Management (Mar. 26, 2025) 4 (“Stewart

Memo”); Dabico Airport Sols. Inc. v. AXA Power ApS,

IPR2025-00408, Paper 21, at 2 (U.S.P.T.O. June 18, 2025)

(designated informative Jan. 9, 2026). The PTO also now

sometimes denies institution because the patent claim has

been challenged before (even if by a different party, on

different grounds). E.g., Webgroup Czech Republic, A.S.

v. DISH Techs. LLC, IPR2025-00467, Paper 14, at 2-3

(U.S.P.T.O. July 16, 2025); Intel Corp. v. Advanced

Cluster Sys., Inc., IPR2025-00794, Paper 13, at 2-3

(U.S.P.T.O. Aug. 14, 2025). And the PTO sometimes

denies institution because the petitioner pursued

different claim construction arguments in litigation (even

when the litigation argument was statutorily unavailable

in IPR). Tesla, Inc. v. Intellectual Ventures II LLC,

IPR2025-00340, Paper 18, at 2-4 (U.S.P.T.O. Nov. 5, 2025)

(designated informative, Nov. 5, 2025).

Although the agency has repeatedly begun the

rulemaking process, none of those PTO-created IPR

institution criteria are set forth in any notice-andcomment rule. See, e.g., 88 Fed. Reg. 24,503, 24,513-517

(Apr. 21, 2023) (advanced notice of proposed rulemaking

including the time-to-trial criterion); 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, 48,341 (Oct. 17, 2025)

4 https://perma.cc/J353-H33U.

(another notice of proposed rulemaking including the

time-to-trial criterion).

These agency-devised limits on IPR, none with any

basis in any statute, have had dramatic effect. Since

introducing a new spate of limits in 2025, the institution

rate has “plummeted.” Eileen McDermott, USPTO Stats

Show IPR Institution Rate Has Plummeted by 43%, IP

Watchdog (Apr. 8, 2026); 5 see also Patent Trial and

Appeal Board, PTAB Trial Statistics 7 (May 2026) 6 (“May

2026 PTAB Statistics”).

Proceedings Below

1. After respondent Granite Vehicle Ventures LLC

sued petitioner Tesla, Inc. for patent infringement, Tesla

petitioned for IPR of the asserted patents. See App. 1a.

Tesla filed its IPR petitions within months after being

“served with [the] complaint”—and thus well within the

one-year statutory deadline. 35 U.S.C. §315(b); see

Compl., Granite Vehicle Ventures LLC v. Tesla, Inc., No.

2:24-cv-01007, Dkt. No. 1 (E.D. Tex. Dec. 6, 2024); Pet.,

Tesla, Inc. v. Granite Vehicle Ventures LLC, No.

IPR2025-00943, Paper 1 (P.T.A.B. May 5, 2025); Pet.,

Tesla, Inc. v. Granite Vehicle Ventures LLC, No.

IPR2025-00944, Paper 1 (P.T.A.B. May 2, 2025); Pet.,

Tesla, Inc. v. Granite Vehicle Ventures LLC, No.

IPR2025-01034, Paper 1 (P.T.A.B. May 28, 2025); Pet.,

Tesla, Inc. v. Granite Vehicle Ventures LLC, No.

IPR2025-01035, Paper 1 (P.T.A.B. May 28, 2025).

5 https://perma.cc/5MLQ-E3HL.

6 https://perma.cc/H68W-L3FW.

Because of the PTO’s “Sotera stipulation” exception to

the time-to-trial rule, Tesla stipulated in court that it

would pursue only a limited, specific set of invalidity

challenges in litigation if IPR were instituted. Def.’s

Notice of Broadened Sotera Plus Stipulation, Granite

Vehicle Ventures LLC v. Tesla, Inc., No. 2:24-cv-01007,

Dkt. No. 88 (E.D. Tex. July 24, 2025). Tesla thus

surrendered far more to comply with the PTO’s doctrine

(at the IPR institution stage) than the statute requires

(through estoppel after IPR final decision). Compare id.

(stipulating not to raise “system prior art” grounds that

could not have been raised in IPR), with §315(e)(2)

(precluding IPR petitioners, after final written decision,

from raising in litigation only “any ground that the

petitioner raised or reasonably could have raised during

that inter partes review”).

2. The PTO denied institution. App. 4a-7a, 8a-10a. It

purported “to exercise discretion to deny institution . . .

based on a holistic assessment” of unspoken criteria.

App. 5a-6a. And it articulated a single ground for denial:

“it is unlikely that a final written decision in this

proceeding will issue before the district court trial

occurs.” App. 5a-6a; see App. 9a.

That reasoning rested on the PTO’s prediction that

the district court trial would occur in summer or fall 2026,

before the IPR would conclude in December 2026.

App. 5a. In reality, however, the district court

proceedings have taken much longer. The originally

scheduled trial date moved—as often happens. See

Andrew T. Dufresne et al., How Reliable Are Trial Dates

Relied on by the PTAB in the Fintiv Analysis?, 1600

PTAB & Beyond (Oct. 29, 2021) (finding PTO’s trial-date

predictions were wrong 94% of the time). 7 Now, trial is

scheduled for June 2028 (nearly two years after the PTO’s

prediction, and long after the PTO said the IPR would

have concluded). See Case Management and Scheduling

Order, Granite Vehicle Ventures LLC v. Tesla, Inc.,

No. 3:26-cv-01457, Dkt. No. 197 (N.D. Cal. June 26, 2026);

Mem. Op. and Order, Granite Vehicle Ventures LLC v.

Tesla, Inc., No. 2:24-cv-01007 (E.D. Tex. Dec. 17, 2025)

(unsealed public version at Dkt. No. 130-1) (transferring

case to N.D. Cal.).

3. Tesla sought Federal Circuit review by the only

available route under circuit precedent: a petition for a

writ of mandamus. See Mylan Lab’ys Ltd. v. Janssen

Pharmaceutica, N.V., 989 F.3d 1375, 1379, 1381 (Fed. Cir.

2021) (holding that “there is no avenue for direct appeal

of decisions denying institution,” but “we have jurisdiction

to review any petition for a writ of mandamus denying

institution of an IPR”); see 28 U.S.C. §1651(a) (All Writs

Act).

Tesla “argue[d] that the [PTO] exceeded [its]

statutory authority in denying IPR review” by devising an

extra-statutory ground for denying IPR: “use of the timeto-trial factor,” Tesla contended, was “ultra vires.”

App. 2a & n.1.

The Federal Circuit denied Tesla’s petition.

App. 1a-3a. Relying on circuit precedent, the court

refused to review Tesla’s agency-authority claim on the

7 https://ptacts.uspto.gov/ptacts/public-informations/petitions/

1549571/download-documents?artifactId=-gkf8A2TF7hsdxNifHFg76hHBTqxMt3MHqAUjGLGrmBdauZmYmDXAA.

merits. App. 2a-3a & n.1. In particular, the court invoked

its Mylan line of precedent, under which there is “no

reviewability” of statutory challenges to decisions

denying institution—review is available only “for

colorable constitutional claims.” 989 F.3d at 1382; see id.

at 1382-83 (“Given the limits on our reviewability, Mylan’s

ultra vires argument cannot be a basis for granting the

petition for mandamus.”); App. 2a-3a. Summarizing this

precedent, the Federal Circuit maintained that “Congress

committed institution decisions to the Director’s

discretion” and “protected the exercise of that discretion

from review” in 35 U.S.C. §314(d), so judicial review is

“ordinarily unavailable” even in mandamus for nonconstitutional claims. App. 2a. The Federal Circuit

applied that precedent here, denying mandamus because

it viewed Tesla’s claim as “a non-constitutional challenge”

to the PTO’s “‘discretion to deny institution.’” App. 2a-3a

(quoting Mylan, 989 F.3d at 1382). 8

REASONS FOR GRANTING THE PETITION

The Federal Circuit’s decision wrongly forecloses

judicial review.

The Federal Circuit has left the PTO free to

devise limits on IPR beyond its authority.

The Federal Circuit refuses to review whether the

PTO has exceeded its statutory authority by imposing

agency-devised limits on IPR. According to the Federal

8 Tesla also challenged the Fintiv rule for lack of “proper noticeand-comment rulemaking,” and the Federal Circuit rejected that

challenge as well. App. 3a.

Circuit, “there is no reviewability” of the PTO’s grounds

for denying IPR institution—“except for colorable

constitutional claims.” Mylan Lab’ys Ltd. v. Janssen

Pharmaceutica, N.V., 989 F.3d 1375, 1379, 1381, 1382

(Fed. Cir. 2021). The PTO’s compliance with statutory

limits is thus immune from judicial review. Id.; see

App. 2a-3a; Apple Inc. v. Vidal, 63 F.4th 1, 11, 13-14 (Fed.

Cir. 2023) (refusing judicial review of “statutory

challenge” to “content” of PTO-devised institution limits

in an Administrative Procedure Act (“APA”) action).

This Federal Circuit precedent has expanded to cover

the waterfront, foreclosing every statutory challenge to

PTO institution criteria ever advanced. The Federal

Circuit has shut off all available procedural avenues. St.

Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749

F.3d 1373, 1375 (Fed. Cir. 2014) (direct appeal); Mylan,

989 F.3d at 1379 (same); id. at 1382 (mandamus);

App. 2a-3a (same); Apple, 63 F.4th at 11-14 (separate APA

suit). And the Federal Circuit has refused review over any

statutory limit on PTO authority—from the specific AIA

scheme governing IPR to universal APA guardrails. See,

e.g., App. 2a & n.1 (denying review over contentions that

PTO acted “ultra vires” and “exceeded [its] statutory

authority”); Apple, 63 F.4th at 11 (denying review over

contention that PTO rule was “not ‘reasonable and

reasonably explained’”); In re Motorola Sols., Inc., 159

F.4th 30, 38 (Fed. Cir. 2025) (denying review over

unexplained change of position); id. (denying review over

retroactive application of new rule without statutory

authority); id. (denying review over failure to account for

relevant considerations).

And within the last year, the Federal Circuit removed

any doubt that the courthouse doors are closed to such

claims, refusing judicial review of more than a dozen challenges to the PTO’s authority to refashion the criteria for

IPR institution—including in the decision below.

App. 1a-3a; In re Motorola Sols., Inc., 159 F.4th 30 (Fed.

Cir. 2025); In re SAP Am., Inc., No. 2025-132, 2025

WL 3096788 (Fed. Cir. Nov. 6, 2025); In re Google LLC,

No. 2025-144, 2025 WL 3096849 (Fed. Cir. Nov. 6, 2025);

In re Cambridge Indus. USA Inc., No. 2026-101, 2025

WL 3526129 (Fed. Cir. Dec. 9, 2025); In re Sandisk Techs.,

Inc., No. 2025-152, 2025 WL 3526507 (Fed. Cir.

Dec. 9, 2025); In re Google LLC, No. 2026-111, 2026

WL 204945 (Fed. Cir. Jan. 27, 2026); In re HighLevel,

Inc., No. 2025-148, 2025 WL 3527144 (Fed. Cir.

Dec. 9, 2025); In re Intel Corp., No. 2026-113, 2026

WL 506045 (Fed. Cir. Feb. 24, 2026); In re Kangxi

Commc’n Techs. (Shanghai) Co., No. 2026-115, 2026

WL 506927 (Fed. Cir. Feb. 24, 2026); In re Tessell, Inc.,

No. 2026-117, 2026 WL 505597 (Fed. Cir. Feb. 24, 2026);

In re Kahoot! AS, No. 2026-119, 2026 WL 519635 (Fed.

Cir. Feb. 25, 2026); In re Volkswagen Grp. of Am., Inc.,

No. 2026-123, 2026 WL 776550 (Fed. Cir. Mar. 19, 2026);

see also In re Maplebear Inc., No. 2026-105 (Fed. Cir.)

(mandamus petition filed but later voluntarily dismissed).

Thus, as Federal Circuit law stands, the PTO can

devise any limit on IPR—no matter how egregiously

beyond its authority or arbitrary. The PTO could ignore

clear directives from Congress; it could start denying IPR

petitions merely because they were filed on Tuesdays.

The Federal Circuit would look the other way.

The Federal Circuit’s approach is contrary to

35 U.S.C. §314(d) and this Court’s decisions

interpreting it.

The Federal Circuit’s approach cannot be squared

with the AIA or this Court’s precedents. It has freed the

PTO from the congressional and judicial constraints that

bind other agencies. “Administrative agencies are

creatures of statute” that “possess only the authority that

Congress has provided.” Nat’l Fed’n of Indep. Bus. v.

Dep’t of Labor, 595 U.S. 109, 117 (2022) (per curiam). And

it is the “traditional” office of the courts to “‘fix[] the

boundaries of [that] delegated authority.’” Loper Bright

Enters. v. Raimondo, 603 U.S. 369, 395-96 (2024) (citation

omitted). So this Court “ordinarily presume[s] that

Congress intends the executive to obey its statutory

commands and, accordingly, that it expects the courts to

grant relief when an executive agency violates such a

command.” Bowen v. Michigan Acad. of Family

Physicians, 476 U.S. 667, 670 (1986).

While the Federal Circuit reads 35 U.S.C. §314(d) to

immunize the PTO from statutory challenge, this Court

has held otherwise: “§314(d) does not ‘enable the agency

to act outside its statutory limits.’” SAS Inst., Inc. v.

Iancu, 584 U.S. 357, 371 (2018) (quoting Cuozzo Speed

Techs., LLC v. Lee, 579 U.S. 261, 275 (2016)).

Rather, §314(d) provides only that “[t]he

determination by the Director whether to institute an

inter partes review under this section shall be final and

nonappealable.” §314(d). It thus bars review of the

Director’s case-specific determination whether institution

is warranted (“[t]he determination . . . whether to

institute an inter partes review”). Id. As this Court has

put it: §314(d) applies to “‘an ordinary dispute about the

application of’” statutory institution criteria. Thryv, Inc.

v. Click-To-Call Techs., LP, 590 U.S. 45, 54 (2020)

(quoting Cuozzo, 579 U.S. at 271).

Section 314(d) does not extend to the more

fundamental question whether the PTO has authority to

impose a new limit on institution. That is an overarching

question of agency authority, not merely a challenge to

the case-specific “determination . . . whether to institute

an inter partes review.” §314(d). Again, this Court has

already drawn this distinction: it has not applied §314(d)

to appeals “that present other questions of interpretation

that reach, in terms of scope and impact, well beyond ‘this

section.’” Cuozzo, 579 U.S. at 275.

The relief sought here reinforces that §314(d) is

inapplicable. As the Federal Circuit recognized, Tesla

seeks merely to require the PTO to “reconsider without

relying on time-to-trial as a criterion”—not to command

the PTO to institute review. App. 2a. Tesla’s challenge is

thus trained on the PTO’s unlawful criterion—not the

ultimate “determination . . . whether to institute an inter

partes review.” §314(d).

By applying §314(d) to bar Tesla’s statutory challenge,

the Federal Circuit has extended §314(d) far beyond

where this Court has ever gone. This Court has twice

applied §314(d) to bar review, and both times the

challenger merely contested how the agency applied a

statutory institution criterion in granting institution. In

Cuozzo, the challenger argued that the PTO should not

have instituted review because the petition was not

pleaded sufficiently “with particularity” under §312(a)(3).

579 U.S. at 271-72. In Thryv, the challenger argued that

in applying §315(b)’s one-year bar, the PTO should have

measured the time from a different triggering event. 590

U.S. at 54. In both cases, the Court found the challenges

barred by §314(d) because they “raise[] ‘an ordinary

dispute about the application of’ an institution-related

statute.” Id. at 54 (citation omitted); Cuozzo, 579 U.S. at

271. Neither case concerned the outer limits of the

agency’s statutory authority.

The Court has refrained from applying §314(d) to that

different kind of dispute. In Cuozzo, the Court illustrated

the boundary with a hypothetical: if the Board instituted

review to cancel a claim for indefiniteness (which would

“act outside [the agency’s] statutory limits” because

§311(b) limits IPR petitions to other grounds of

invalidity), that decision “may be properly reviewable.”

579 U.S. at 275. The Court then confirmed reviewability

of statutory-authority challenges in SAS. SAS reiterated

that “[i]f a party believes the Patent Office has engaged in

‘shenanigans’ by exceeding its statutory bounds, judicial

review remains available.” 584 U.S. at 371 (quoting

Cuozzo, 579 U.S. at 275). Applying that rule, SAS held

that §314(d) does not bar review of a contention “that the

Director exceeded his statutory authority” (“by limiting

the review to fewer than all of the claims SAS

challenged”). Id. And even where §314(d) might otherwise

apply, this Court has reserved the question “whether

mandamus would be available in an extraordinary case.”

Thryv, 590 U.S. at 54 n.6.

This Court’s §314(d) precedents thus preserve judicial

review of whether the PTO has exceeded statutory

bounds. Yet the Federal Circuit has now closed off that

review, enabling the PTO to devise extra-statutory

institution criteria with no judicial oversight. That

departure from this Court’s precedents—and the erasure

of judicial and congressional limits on agency action—

calls for this Court’s review.

The Federal Circuit’s approach cannot be

justified by 5 U.S.C. §701(a)(2) and rests on an

erroneous view of the PTO’s discretion.

The Federal Circuit has also suggested that 5 U.S.C.

§701(a)(2) forecloses review of PTO-devised limits on IPR

because the institution determination is “committed to

agency discretion by law.” Mylan, 989 F.3d at 1382; see

App. 2a (restricting review because “Congress committed

institution decisions to the Director’s discretion”). That

reasoning is doubly mistaken.

1. To begin, §701(a)(2) does not bar review of what

discretion the agency has in the first place. That provision

withdraws review only “to the extent that” the action is

committed

agency

discretion.

§701(a)(2).

Section 701(a)(2) therefore does not disable a court from

deciding whether the agency actually possesses the

discretion it claims. That antecedent issue is what the

Federal Circuit refused to review: whether Congress

conferred discretion to invent the IPR institution

criterion imposed here.

Applying §701(a)(2) to bar review of statutory limits

on agency discretion contravenes this Court’s precedents.

Section 701(a)(2) “did not set agencies free to disregard

legislative direction in the statutory scheme that the

agency administers.” Heckler v. Chaney, 470 U.S. 821, 833

(1985). This Court has accordingly “read . . . §701(a)(2)

quite narrowly, restricting it to ‘those rare circumstances

where the relevant statute is drawn so that a court would

have no meaningful standard against which to judge the

agency’s exercise of discretion.’” Weyerhaeuser Co. v.

U.S. Fish & Wildlife Serv., 586 U.S. 9, 23 (2018) (quoting

Lincoln v. Vigil, 508 U. S. 182, 191 (1993)). It therefore

does not bar “the sort of claim that federal courts

routinely assess when determining whether to set aside

an agency decision.” Id. at 25.

And that is exactly the sort of claim at issue here.

Courts retain the “obligation[]” to “police the outer

statutory boundaries” of congressional delegations of

discretionary authority. Loper Bright, 603 U.S. at 404.

Courts reviewing agency action are thus “required to

decide whether the [agency] acted within the scope of [its]

authority.” Citizens to Pres. Overton Park, Inc. v. Volpe,

401 U.S. 402, 415 (1971). The statute defines that scope—

and thus supplies the “meaningful standard” for judging

whether the agency exceeded its limits. Tesla’s claim is

that the AIA does not permit the PTO to deny access to

IPR based on time to trial, and that is the kind of statutory

challenge that courts routinely resolve.

Other courts of appeals—unlike the Federal Circuit—

have applied §701(a)(2) exactly this way: reviewing the

statutory limits of an agency’s discretion even when the

ultimate decision is discretionary. See Pet. 23-25, Google,

No. 25-1230; see, e.g., Farmworker Justice Fund, Inc. v.

Brock, 811 F.2d 613, 622 (D.C. Cir. 1987), vacated on

mootness grounds, 817 F.2d 890 (1987); Ward v. Skinner,

943 F.2d 157, 160 (1st Cir. 1991); Rodriguez v. Mayorkas,

2024 WL 4023841, at *2 (2d Cir. Sept. 3, 2024).

2. The Federal Circuit’s reliance on §701(a)(2) is

flawed for an independent reason: it seemingly assumes

the erroneous premise that the PTO has freewheeling

discretion to deny IPR institution for any reason. See

Apple Inc. v. Squires, 166 F.4th 1349, 1360 (Fed. Cir. 2026)

(“[T]he Director has broad and protected discretion not to

launch an IPR . . . .”); Mylan, 989 F.3d at 1382. That

unbounded view of the PTO’s power is wrong.

Congress prescribed a reticulated set of IPR

institution criteria. The provision governing “Institution

of inter partes review” specifies a threshold for

institution: IPR “may not” be instituted unless “there is a

reasonable likelihood that the petitioner would prevail.”

35 U.S.C. §314(a). Other provisions set forth firm limits,

such as filing deadlines and estoppel. E.g., 35 U.S.C.

§§311(c), 315(b), 315(e). Still others confer specific

discretionary power—for example, “the Director may

take into account whether, and reject the petition . . .

because, the same or substantially the same prior art or

arguments previously were presented to the Office.”

§325(d); see also, e.g., §315(d).

No provision empowers the PTO to supplant that statutory framework with its own by agency fiat. Congress

expected that the “reasons why no inter partes review

should be instituted” would be “based upon the failure of

the petition to meet any requirement of this chapter”—

that is, the requirements specified by statute. 35 U.S.C.

§313 (emphasis added). Congress did not craft a detailed

institution scheme just so the PTO could act on its own

discretionary whim.

Indeed, the specific discretion that Congress

conferred in provisions like §325(d) becomes superfluous

under the Federal Circuit’s view that the PTO has general

discretion to deny IPR petitions for any reason. It is

implausible that Congress intended to grant the agency

unbounded discretion to craft any institution framework

it wished, yet forgot to say so—while articulating a system

of narrower, calibrated grants of discretion.

The only AIA provision the PTO has invoked for the

supposed grant of unbounded discretion is §314(a). See

C.A. PTO Director Resp. 20-21. But far from conferring

power, that provision is phrased as a constraint: the

Director “may not” institute IPR “unless” the petitioner

is reasonably likely to prevail on the merits. §314(a). Nor

does §314(a) (silently) confer unbounded discretion just

because it does not mandate institution when that

requirement is met. Section 314(a) lacks mandatory

language for a simple reason: even for petitions clearing

§314(a)’s merits criterion, other statutory criteria outside

§314(a) could still defeat institution. E.g., §§315(b), 315(d),

315(e), 325(d). But it was Congress that chose these

additional criteria—and specified which would be

discretionary. The PTO has no power to supplant those

choices.

3. Without support in the statute itself, the Federal

Circuit has tried to read this Court’s decisions as

establishing broad discretion for the PTO. See Mylan, 989

F.3d at 1382 (suggesting that because “the Supreme

Court has explained[] [that] ‘the [Patent Office]’s decision

to deny a petition is a matter committed to the Patent

Office’s discretion,’” the PTO “is free” to deny institution

for its own reasons (quoting Cuozzo, 579 U.S. at 273); see

also Squires, 166 F.4th at 1353 (also citing United States

v. Arthrex, Inc., 594 U.S. 1, 8-9 (2021)). Yet this Court has

never considered—let alone decided—what discretion the

PTO has to invent new IPR criteria. This confusion over

the meaning of this Court’s decisions reinforces the need

for review.

This Court has described the institution “decision” as

committed to the PTO’s “discretion,” but the scope of that

discretion was not at issue in those cases. Cuozzo, 579 U.S.

at 273; Oil States Energy Servs., LLC v. Greene’s Energy

Grp., LLC, 584 U.S. 325, 343 n.5 (2018); Arthrex, 594 U.S.

at 8-9. Those cases decided separate questions. Cuozzo,

579 U.S. at 271-83 (whether §314(d) barred review of

“Cuozzo’s claim that Garmin’s petition was not pleaded

‘with particularity’” and whether a PTO regulation

imposing a standard of construction was valid); Oil States,

584 U.S. at 329 (whether IPR violates Article III or the

Seventh Amendment); Arthrex, 594 U.S. at 11-27

(whether provisions regarding Administrative Patent

Judges violated the Appointments Clause). The Court’s

statements regarding discretion reflect that the AIA

gives the PTO discretion in applying statutory institution

criteria. E.g., §§315(d), 325(d). But the Court had no

occasion to decide what discretion the PTO has to invent

new criteria.

This Court has often warned against reading “general

language” in its opinions to resolve issues “not then before

the Court.” Illinois v. Lidster, 540 U.S. 419, 424 (2004);

e.g., Olivier v. City of Brandon, 607 U.S. 552, 565 (2026);

Turkiye Halk Bankasi A.S. v. United States, 598 U.S. 264,

278 (2023); Brown v. Davenport, 596 U.S. 118, 141 (2022).

A question of this magnitude—whether the agency may

unilaterally revise a statutory scheme without judicial

oversight—warrants this Court’s plenary consideration.

It should not be settled by unexamined inference from

passing statements on matters not at issue. And with the

Federal Circuit repeatedly declining judicial review, only

this Court can supply the reasoned analysis the question

has never received.

II.

The question presented is exceptionally important,

and the need for review has grown even more urgent

in recent years.

1. The reviewability of the PTO’s IPR restrictions is

exceptionally important. The stakes here are fundamental: whether any court may hold the agency accountable

when it exceeds the limits Congress set. The Federal Circuit has placed the PTO’s IPR restrictions beyond judicial

reach. This gives the agency the extraordinary power to

decide for itself how far its own authority extends. The

PTO should not wield that power without this Court’s review.

These issues also have significant practical consequences for the Nation’s patent system and economy.

Congress established IPR to address “overpatenting and

its diminishment of competition” by “weed[ing] out bad

patent claims efficiently.” Thryv, 590 U.S. at 54. Bad patent claims are a severe economic drain, forcing companies to avoid useful activity for fear of infringing patents

that should never have issued—or undertake costly litigation or licensing. 153 Cong. Rec. H10284 (daily ed. Sept. 7,

2007) (statement of Rep. Eshoo) (addressing “baseless

claims of infringement . . . sapping billions from economic

growth”); 157 Cong. Rec. S1363 (daily ed. Mar. 8, 2011)

(statement of Sen. Schumer) (recognizing “substantial

burden on U.S. courts and the U.S. economy” from “[l]itigation over invalid patents”). IPR alleviates those burdens, canceling invalid patent claims “more quickly and at

less than 10% of the cost of litigation.” Br. of Amici Curiae

35 Intellectual Property Law Professors 8 & n.4, Google,

No. 25-1230. IPR has saved billions of dollars in litigation

costs. Josh Landau, Inter Partes Review: Five Years,

Over $2 Billion Saved, Patent Progress (Sept. 14, 2017). 9

The PTO’s unreviewable power to restrict IPR puts all of

that at risk.

Given the importance of IPR—and of judicial review

of the PTO’s administration of IPR—this Court has

granted review three times in the last decade to address

§314(d)’s scope (in Cuozzo, SAS, and Thryv). Here, the reviewability question is even more fundamental. While

Cuozzo, SAS, and Thryv concerned the reviewability of

particular PTO rationales, at stake here is the reviewability of an entire class of basic challenges to agency action:

whether the PTO’s institution criteria are reviewable for

compliance with statutory limits.

2. The question presented has recently grown even

more important. With the unreviewable power the Federal Circuit has conferred, the PTO has increasingly reshaped IPR—especially since 2025.

9 https://perma.cc/7HPG-Z4DF.

The PTO has been inventing—then re-inventing—limits on IPR found nowhere in the AIA. See generally Br.

for Unified Patents, LLC as Amicus Curiae 6-12, Google,

No. 25-1230. The agency unilaterally created the Fintiv

time-to-trial limit that Tesla challenges here. Supra 5-6. It

tacked on other limits—like coercing IPR petitioners to

stipulate not to raise arguments in district court, even

when some of those arguments are unavailable in IPR.

Supra 6-7. It added exceptions (e.g., Fintiv does not apply

if the patent challenge is “compelling” on the merits)—

only to reverse course later. Compare Vidal Memo 4, with

Memorandum from Scott R. Boalick to Members of the

Patent Trial and Appeal Board, Guidance on USPTO’s re-

cission of “Interim Procedure for Discretionary Denials in

AIA Post-Grant Proceedings with Parallel District Court

Litigation” at 2-3 (Mar. 24, 2025) 10 (“Boalick Memo”).

Since 2025, the agency has escalated from tinkering to

overhaul. See generally Br. for Unified Patents, LLC as

Amicus Curiae 8-10, Google, No. 25-1230. In quick succession, it invented a slew of new extra-statutory restrictions

on IPR—including a “settled expectations” limit based on

patent age, a limit for patent claims previously challenged

elsewhere, and a bar on foreign-government-affiliated petitioners. Memorandum from Coke Morgan Stewart to All

PTAB Judges, Interim Processes for PTAB Workload

Management, at 2 (Mar. 26, 2025)11 (“Stewart Memo”);

Tianma Microelectronics Co. v. LG Display Co., IPR202501579, Paper 12, at 3-7 (U.S.P.T.O. Mar. 18, 2026) (designated precedential Mar. 18, 2026). In the same timespan,

10 https://perma.cc/YG4X-TWV6.

11 https://perma.cc/J353-H33U.

the agency also reversed several facets of its Fintiv and

Sotera rules—then added new ones. Boalick Memo 2-3

(reversing course on whether Sotera stipulations are dispositive, whether Fintiv applies to International Trade

Commission proceedings, and the compelling-merits exception to Fintiv); Motorola Sols., Inc. v. Stellar, LLC,

IPR2024-01205, -01206, -01207, -01208, Paper 19, at 3-4

(U.S.P.T.O. Mar. 28, 2025) (expanding Sotera stipulation

to “system prior art” challenges).

The effect on IPR has been dramatic. The IPR petition

grant rate has collapsed—from 68% to 38% in the last two

years. May 2026 PTAB Statistics 7; see also Dennis

Crouch, An Era of No: The USPTO’s New 0% Institution

Rate, Patently-O (Nov. 12, 2025) (reporting that institution rate fell to 0% at one point in fall 2025). 12 In turn, the

IPR filing rate has also plummeted to a historic low (down

85% year over year)—indicating that the PTO’s restrictions have deterred the public from pursuing IPR.

May 2026 PTAB Statistics 5 (petitions per month down

from 135 to 20 from May 2025 to May 2026); Unified Patents, Patent Dispute Report: Q1 2026 (Apr. 14, 2026). 13

Stakeholders from every quarter have sounded the

alarm. With the PTO’s new limits on IPR, “[t]he IPR system . . . is functionally suspended.” Dennis Crouch, Inter

Partes Review in 2026, Patently-O (May 24, 2026);14 see

also, e.g., Br. for 35 Intellectual Property Law Professors

as Amici Curiae 1-2, Google, No. 25-1230 (PTO has acted

12 https://perma.cc/FW4H-QVBC.

13 https://perma.cc/SX8X-P2YF.

14 https://perma.cc/CJE3-AUST.

to “effectively abolish the IPR process”); Br. for PTAB

Bar Association as Amicus Curiae 5, Google, No. 25-1230

(“The IPR process that Congress designed is being systematically dismantled through administrative fiat . . . .”);

Br. for Association for Accessible Medicines as Amicus

Curiae 17, Google, No. 25-1230 (PTO has “effectively eliminated IPRs for generics and biosimilars” (capitalization

altered)); Br. for Askeladden L.L.C. as Amicus Curiae 3-15, Google, No. 25-1230; Br. for Association for

Competitive Technology as Amicus Curiae 8-15, Google,

No. 25-1230; Br. for US*Made et al. as Amici Curiae 4-27,

Google, No. 25-1230; Br. for Unified Patents, LLC as

Amicus Curiae 3-17, Google, No. 25-1230.

The question presented is thus more pressing now

than ever. The PTO has never before revamped IPR institution criteria so extensively—nor construed its own

authority so broadly. And the practical effects have been

unprecedented. A flood of challenges has arisen: in the

past eight months alone, the Federal Circuit turned away

over a dozen cases contesting the PTO’s institution criteria. Supra 13. Those challenges came from stakeholders

across industries: automotive, semiconductor, wireless

technology, consumer electronics, e-commerce, and education, to name a few. The PTO has disrupted “a significant portion of the American economy,” W. Virginia v.

Env’t Prot. Agency, 597 U.S. 697, 722 (2022), yet seeks to

avoid judicial review of its actions altogether. Whether

this state of affairs can persist should be resolved by this

Court.

Immediate intervention is especially warranted because the PTO is shielding its institution criteria from judicial review even more, impeding this Court from taking

up the question in the future. The PTO has begun denying

institution in one-line summary notices that disclose no

rationale at all. Memorandum from John A. Squires to All

PTAB Judges, Director Institution of AIA Trial Proceedings (Oct. 17, 2025). 15 A party cannot challenge—and a

court cannot review—institution criteria it cannot identify. Thus, future chances to decide the reviewability of

the PTO’s institution criteria may not arise. The time for

this Court’s review may be now or never.

3. The Fintiv time-to-trial rule applied here exemplifies the problems the Federal Circuit’s reviewability precedent invites. The PTO unilaterally fabricated this constraint on IPR from whole cloth, closing off the IPR

scheme to cases Congress meant it to address.

A time-to-trial limit on IPR appears nowhere in any

statute. Congress made a different choice. It specified one

timing condition for IPR filed alongside litigation: the petition must be filed within one year after the infringement

complaint is served. 35 U.S.C. §315(b). Congress left no

room for the agency to impose a second, extra-statutory

deadline of its own.

The time-to-trial limit prevents the cancellation of bad

patents—the entire point of the congressional scheme.

Thryv, 590 U.S. at 54. Congress established IPR as an “alternative[] to litigation.” H.R. Rep. No. 112–98, pt. 1, at

40, 48 (2011); see 35 U.S.C. §315 (contemplating IPR coexisting with litigation). Yet the time-to-trial rule does the

opposite: it closes off IPR and forces parties to litigate instead. Moreover, the rule necessarily operates to shield

15 https://perma.cc/KX8X-39NZ.

weak patents from review, because it adds a barrier to institution on top of the requirement of a “reasonable likelihood” of establishing invalidity. 35 U.S.C. §314(a). Strong

patents are already protected against IPR by that reasonable-likelihood criterion; all the time-to-trial limit adds is

to protect weak ones.

The time-to-trial limit also operates arbitrarily. It

rests on trial-date projections that are notoriously unreliable. Dufresne, supra (finding PTO’s trial-date predictions were wrong 94% of the time). This case is a perfect

illustration: the PTO denied institution because it predicted that the district court trial would occur before December 2026, but in fact trial is now scheduled for years

later. Supra 9-10.

This agency-devised limit has had sweeping effect. It

has accounted for hundreds of IPR petition denials.

Johnson, supra (218 denials over 5-month period in 2025

alone); see also Patent Trial and Appeal Board, Parallel

Litigation Study 12 (June 2022) 16 (by early 2022, Fintiv

was raised in over 50% of IPR cases). And it has reshaped

not just IPR practice but also patent litigation. Parties

now must craft litigation strategy around the PTO’s timeto-trial rule (and the agency’s other constantly changing

extra-statutory criteria). See supra 5-7, 23-24. And with

its Sotera stipulation framework (allowing IPR

petitioners to escape the time-to-trial limit by stipulating

not to raise certain arguments in litigation), the agency

now exerts control over what rights parties give up in

court. The PTO should not wield such power—contrary to

16 https://perma.cc/74YK-AS8Y.

statute yet untouchable by any court—without this

Court’s review.

III.

This case is an ideal companion to Google and Intel.

1. This case is a clean vehicle. The question is squarely

presented and outcome-determinative: the Federal

Circuit’s sole reason for rejecting Tesla’s statutory

challenge to the PTO’s time-to-trial rule was that the

challenge was not reviewable under circuit precedent.

App. 2a-3a. And every issue was aired below, from the

scope of §314(d) to the extent of the PTO’s discretion over

institution criteria. See C.A. Pet. 12-18, 20-22.

2. The Court should grant review in this case alongside

the other pending petitions raising the same reviewability

question, Google (No. 25-1230) and Intel (No. 26-73).

These three cases raise the question presented in

every relevant procedural posture. The only ways a party

can seek judicial review of the PTO’s criteria for denying

institution are (a) directly from IPR proceedings (via

mandamus, because the Federal Circuit forbids direct

appeal, Mylan, 989 F.3d at 1379) or (b) in a separate APA

suit. This case and Google arise in the first posture; Intel

arises in the second.

These cases also present the two most significant

PTO-devised limits on IPR: the Fintiv rule (in this case

and Intel) and the “settled expectations” rule (in Google).

Of all the IPR limits the PTO has created over the years,

these two stand out as the most consequential, with each

driving hundreds of IPR denials. See Johnson, supra

(Fintiv); Br. for US*Made et al. as Amici Curiae 2 n.2,

Google, No. 25-1230 (citing list of cases at

https://perma.cc/87GY-NLXK) (settled expectations).

These cases thus give the Court the opportunity to

resolve the reviewability question with the full picture in

view—both procedural postures and both of the PTO’s

most consequential institution criteria. And these cases

allow the Court to provide a complete answer to this

important question by resolving whether judicial review

is available in each procedural avenue.

3. At a minimum, the Court should hold this petition

pending the dispositions of Google and Intel. If the Court

grants review and holds in either case that statutory

challenges to PTO institution criteria are judicially

reviewable, that will undermine the basis for the Federal

Circuit’s decision in this case. Regardless of the vehicle,

the Court should act now to restore judicial enforcement

of statutory constraints in this important area.

CONCLUSION

The petition for a writ of certiorari should be granted.

Respectfully submitted.

ANGELA M. OLIVER

DEBRA J. MCCOMAS

HAYNES AND BOONE, LLP MICHAEL F. QIAN

888 16th Street, N.W., Ste. 300 Counsel of Record

Washington, DC 20006

HAYNES AND BOONE, LLP

2801 N. Harwood Street, Ste. 2300

ASHRAF FAWZY

Dallas, TX 75201

PAUL MARGULIES

(214) 651-5041

TESLA, INC.

michael.qian@haynesboone.com

800 Connecticut Avenue NW

5th Floor

Washington, DC 20006

Counsel for Petitioner Tesla, Inc.

JULY 27, 2026

APPENDICES

Appendix A: Order of the U.S. Court of Appeals

for the Federal Circuit (Feb. 27, 2026) ............................1a

Appendix B: Decision of the U.S. Patent and

Trademark Office (Sept. 26, 2025) ....................................4a

Appendix C: Decision of the U.S. Patent and

Trademark Office (Oct. 10, 2025) ......................................8a

APPENDIX A

NOTE: This order is nonprecedential.

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

In Re TESLA, INC.,

Petitioner

No. 2026-116

On Petition for Writ of Mandamus to the United States

Patent and Trademark Office in Nos. IPR2025-00943,

IPR2025-00944, IPR2025-01034 and IPR2025-01035.

ON PETITION AND MOTION

Before TARANTO, MAYER, and STARK, Circuit Judges.

PER CURIAM.

ORDER

In response to Granite Vehicle Ventures LLC filing

suit alleging patent infringement, Tesla, Inc. petitioned

the United States Patent and Trademark Office (“PTO”)

for inter partes review (“IPR”) of the asserted patents.

The Director of the PTO, through his delegee, the Deputy

Director, denied Tesla’s petitions. In particular, the Director reasoned “it is unlikely that a final written decision

in [these] proceeding[s] will issue before the district court

trial occurs,” and such review would result “in significant

duplication of effort, additional expense for the parties,

and a risk of inconsistent decisions.” Appx2, Appx6. Tesla

now petitions this court for a writ of mandamus directing

the PTO to vacate the non-institution decisions and reconsider without relying on time-to-trial as a criterion.

ECF No. 2-1 at 11. Granite and the Director oppose.

Mandamus is a “drastic and extraordinary remedy reserved for really extraordinary causes.” Cheney v. U.S.

Dist. Ct. for D.C., 542 U.S. 367, 380 (2004). A petitioner

must ordinarily show, among other things, a clear and indisputable right to relief. Id. at 380–81. Given Congress

committed institution decisions to the Director’s discretion, even when the statutory pre-conditions are present,

SAS Inst., Inc. v. Iancu, 584 U.S. 357, 366 (2018); Apple

Inc. v. Squires, ___ F.4th ___, 2026 WL 406495 at *1 (Fed.

Cir. Feb. 13, 2026), and protected the exercise of that discretion from review by making such determinations “final

and nonappealable,” 35 U.S.C. § 314(d), we have recognized that, in the absence of a colorable constitutional

claim, mandamus is ordinarily unavailable for review of

institution decisions. Mylan Lab’ys Ltd. v. Janssen Pharmaceutica, N.V., 989 F.3d 1375, 1382 (Fed. Cir. 2021); Apple Inc. v. Vidal, 63 F.4th 1, 12 n.5 (Fed. Cir. 2023).

We see no reason to grant such relief here. Tesla primarily argues that the Director exceeded his statutory

authority in denying IPR review. 1 But the Director here

Tesla casts its ultra vires arguments, regarding the Director’s

use of the time-to-trial factor, also as a constitutional separation of powers challenge. But the Supreme Court has noted that

“claims simply alleging that the President has exceeded his

statutory authority are not ‘constitutional’ claims,” Dalton v.

Specter, 511 U.S. 462, 473–74 (1994), and we agree with the

PTO that this challenge presents no colorable constitutional

claim.

merely concluded that instituting IPR would not be an efficient use of agency resources given the progress of the

civil litigation between the parties at the time. In circumstances like these, we have not exercised mandamus authority to disturb a denial of institution decision and see

no basis to do so here either. See Mylan, 989 F.3d at 1382

(holding a petitioner has no right to mandamus relief

when a non-constitutional challenge is to “the Director’s

exercise of his discretion to deny institution”). Nor has

Tesla shown any clear and indisputable right to disturb

the non-institution decisions based on its contention that

the Director failed to conduct proper notice-and-comment rulemaking. See Apple, 2026 WL 406495, at *1

(holding that the PTO’s “general statement[s] of policy”

are exempted from notice-and-comment rulemaking procedures).

Accordingly,

IT IS ORDERED THAT:

(1) The petition is denied.

(2) The unopposed motions at ECF Nos. 12, 16, 20,

and 25 for leave to file amici curiae briefs are granted

and the corresponding briefs are accepted for filing.

FOR THE COURT

[Court Seal]

February 27, 2026

Date

Jarrett B. Perlow

Clerk of Court

APPENDIX B

UNITED STATES PATENT AND

TRADEMARK OFFICE

BEFORE THE OFFICE OF THE

UNDER SECRETARY OF COMMERCE

FOR INTELLECTUAL PROPERTY AND

DIRECTOR OF THE UNITED STATES

PATENT AND TRADEMARK OFFICE

TESLA, INC.,

Petitioner,

GRANITE VEHICLE VENTURES LLC,

Patent Owner.

IPR2025-00943 (11,597,402 B2)

IPR2025-00944 (11,738,765 B2)

Before COKE MORGAN STEWART, 1 Deputy Under

Secretary of Commerce for Intellectual Property and

Deputy Director of the United States Patent and Trademark Office.

DECISION

Denying Institution of Inter Partes Review

The Director has delegated his discretionary authority to the

Deputy Director for this decision. See https://www.uspto.gov/

sites/default/files/documents/dsco-delegation.pdf.

Granite Vehicles Ventures LLC (“Patent Owner”)

filed a request for discretionary denial (Papers 11

(sealed), 12 (redacted), “DD Req.”) in the above-captioned cases, and Tesla, Inc. (“Petitioner”) filed an opposition (Paper 14, “DD Opp.”). 2 With authorization, Patent

Owner filed a Reply (Paper 15), and Petitioner filed a Surreply (Paper 16).

After considering the parties’ arguments and the record, and in view of all relevant considerations, discretionary denial of institution is appropriate in these proceedings. This determination is based on the totality of the evidence and arguments the parties have presented.

In particular, the projected final written decision due

date in the Board proceedings is in December 2026. DD

Req. 8. The district court’s scheduled trial date is August 3, 2026, and time-to-trial statistics suggest trial

would begin in October or November 2026. Id. at 6, 16;

DD Opp. 15; Reply 3. Additionally, there is insufficient

evidence that the district court is likely to stay its proceeding even if the Board were to institute trial. Therefore, it is unlikely that a final written decision in this proceeding will issue before the district court trial occurs, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions.

Even though the challenged patents have not been in

force for a significant period of time (issued in 2023), this

fact alone does not tip the balance against discretionary

denial.

Citations are to papers in IPR2025-00943. The parties filed