Amicus Curiae Brief — Tesla, Inc., Petitioner v. Granite Vehicle Ventures LLC, et al.

Supreme Court briefAug 28, 2026

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No. 26-136

In the Supreme Court of the United States

─────────────i─────────────

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

BRIEF OF US*MADE, THE ALLIANCE FOR

AUTOMOTIVE INNOVATION, HIGH TECH

INVENTORS ALLIANCE, THE COMPUTER &

COMMUNICATIONS INDUSTRY

ASSOCIATION, ASSOCIATION FOR

COMPETITIVE TECHNOLOGY (ACT), THE

SOFTWARE & INFORMATION INDUSTRY

ASSOCIATION, BUSINESS SOFTWARE

ALLIANCE, AND NATIONAL RETAIL

FEDERATION AS AMICI CURIAE IN

SUPPORT OF PETITIONER

Joseph Matal

CLEAR IP, LLC

888 16th St., NW Suite 300

Washington, DC 20006

(202) 654-4500

Joseph.Matal@clearpatents.com

Counsel for Amici Curiae

August 28, 2026

QUESTION PRESENTED

The America Invents Act (AIA) provides that a

petition for inter partes review may not be filed “more

than 1 year after the date on which the petitioner . . .

is served with a complaint alleging infringement of

the patent.” 35 U.S.C. § 315(b). Congress made clear

that it chose this one-year deadline with a goal of

ensuring that petitioners would have adequate time

to conduct a prior art search and to learn which

patent claims will be asserted in litigation. See 157

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

Since 2020, the USPTO has imposed an additional

timeliness condition: it requires that a petition be

filed early enough that the inter partes review will

conclude before the copending infringement litigation

is likely to go to trial.

As the agency has

acknowledged, this rule “may require petitioners to

act more quickly than the maximum amount of time

permitted by Congress.”

Apple Inc. v. Seven

Networks, LLC, IPR2020-00156 (PTAB 2020). In the

most popular district for patent infringement

litigation, this rule effectively requires a petitioner to

file less than four months after it has been sued. In

other jurisdictions, there is no time to file at all.

The question presented by this case is, does the

one-year statutory deadline for filing an inter partes

review petition bind the USPTO and control the

question of the petition’s timeliness in relation to

infringement litigation, or may the agency override

the statutory time limit with its own rules that

further limit the amount of time that is available to

file a petition for review?

TABLE OF CONTENTS

TABLE OF AUTHORITIES ...................................IV

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

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

ARGUMENT ................................................................ 6

The USPTO’s actions violate its

authorizing statute and are dismantling

the congressionally enacted system of

patent validity review. ................................... 6

II.

This Court has recognized that when

Congress sets a deadline, that deadline

controls the question of a proceeding’s

timeliness. ........................................................ 18

III. PTAB petitioners—and the public—have

legitimate interests in AIA reviews that

are entitled to legal protection. ................. 21

IV. The statutory framework for patentvalidity reviews is not merely optional for

the agency to follow. ..................................... 25

The Federal Circuit’s interpretation

would wreak havoc with other federal

statutes. ........................................................ 25

Inter partes review’s statutory safety

valve confirms that broad “resources”

discretion was not intended by

Congress. ...................................................... 30

CONCLUSION .......................................................... 32

iii

TABLE OF AUTHORITIES

CASES

Apple Inc. v. Vidal, 63 F.4th 1 (Fed. Cir. 2023) ....... 25

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

792 (Fed. Cir. 2018)................................................ 14

Cochrane v. Deener, 94 U.S. 780 (1876).................... 23

Cuozzo Speed Techs., LLC v. Lee,

579 U.S. 261 (2016) ................................................ 24

Hyosung TNS Inc. v. ITC, 926 F.3d 1353 (Fed. Cir.

2019) ........................................................................ 10

In re Motorola Sols., 159 F.4th 30 (Fed. Cir. 2025) . 23

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

(2021) ....................................................................... 14

Mylan Labs. Ltd. v. Janssen Pharm., N.V., 989 F.3d

1375 (Fed. Cir. 2021).............................................. 25

Parke-Davis & Co. v. H. K. Mulford Co., 189 F. 95

(C.C.S.D.N.Y. 1911)................................................ 23

Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663

(2014) ................................................................. 18, 20

SCA Hygiene Prods. Aktiebolag v. First Quality Baby

Prods., LLC, 580 U.S. 328 (2017).................... 19, 20

Thryv, Inc v. Click-To-Call Techs., LP, 590 U.S. 45

(2020) ....................................................................... 24

STATUTES AND REGULATIONS

7 U.S.C. § 2262a(b) ..................................................... 28

10 U.S.C. § 1094(a)(1) ................................................ 27

11 U.S.C. § 747 ........................................................... 28

12 U.S.C. § 1831a ....................................................... 27

12 U.S.C. § 5103(a) ..................................................... 27

16 U.S.C. § 5503(a) ..................................................... 26

17 U. S. C. §507(b) ...................................................... 18

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

35 U.S.C. § 119(e)(2) ................................................... 29

35 U.S.C. § 311(a) ....................................................... 30

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

35 U.S.C. § 314(b) ......................................................... 8

35 U.S.C. § 315(b) ............................................... 3, 6, 19

35 U.S.C. § 315(e) ......................................................... 3

35 U.S.C. § 316(a)(11) .................................................. 8

37 C.F.R. § 42.107(b) .................................................... 8

42 U.S.C. § 1490j ........................................................ 28

46 U.S.C. § 4503(a) ..................................................... 26

46 U.S.C. § 55103(a) ................................................... 26

47 U.S.C. § 272(a)(1) .................................................. 26

47 U.S.C. § 336(f)(7) ................................................... 27

49 U.S.C. § 30112(a)(1) .............................................. 27

52 U.S.C. § 30114(c)(1) ............................................... 28

Pub. L. No. 112-29 ...................................................... 31

PTAB DECISIONS

Apple Inc. v. Fintiv, Inc., IPR2020-00019 (Mar. 20,

2020) .......................................................................... 7

Apple Inc. v. Seven Networks, LLC, IPR2020-00156

(PTAB 2020)............................................................... i

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

Signal Alignment, Inc., IPR2024-01379 (Apr. 17,

2025) .......................................................................... 8

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

IPR2024-01479, -01478 (Apr. 7, 2025) ................... 8

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

12, 2023) .................................................................. 22

Motorola Solutions, Inc. v. Stellar, LLC, IPR202401205 (Mar. 28, 2025) .............................................. 8

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

IPR2021-01229 (June 13, 2023) ............................ 22

Sotera Wireless, Inc. v. Masimo Corp., IPR202001019 (Dec. 1, 2020) ................................................. 7

PTAB DECISIONS

157 Cong. Rec. S5429 (daily ed. Sep. 8, 2011) ........ i, 7

H.R. Rep. No. 96-1307, 96th Cong. (1980) ............... 24

S.23, America Invents Act, 112th Congress (2011) ... 6

Weekly Compilation of Presidential Documents,

President Jimmy Carter, Dec. 12, 1980, Vol. 16,

No. 50....................................................................... 24

OTHER AUTHORITIES

Adam Lidgett, Industry Groups Want Trump Admin

To Stop PTAB Changes, Law360, Nov. 4, 2025... 23

Britain Eakin, Intel Hit With $949M Verdict In

Latest VLSI Patent Fight,

Law360, Nov. 5, 2022 ............................................. 22

Dani Kass, What Judges Want You to Know:

Litigate Smarter, Law360, Feb. 11, 2025 ............ 24

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

“Settled Expectations” Doctrine, Law360, Aug. 29,

2025 ......................................................................... 14

Dennis Crouch, Borrowing from the Board: District

Court Obviousness in the Post-IPR Era,

PatentlyO, May 21, 2026 ....................................... 16

Dennis Crouch, Four Petitions, One Question: Tesla

Joins the Supreme Court’s IPR Reviewability

Docket, PatentlyO, Jul. 30, 2026 .......................... 13

Dennis Crouch, Inter Partes Review in 2026,

PatentlyO, May 24, 2026 ....................................... 16

Director Institution of AIA Trial Proceedings,

October 17, 2025 ..................................................... 10

Patent Trial and Appeal Board Parallel Litigation

Study June 2022 ..................................................... 15

PTAB Trial Statistics: 2025 End of Year Outcome

Roundup ............................................................ 15, 21

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

$2.18 billion to VLSI Tech, Mar. 2, 2021 ............. 22

vii

Ryan Davis, New Patent Suits Surge As PTAB

Challenges Get Tougher,

Law360, August 4, 2026 .......................................... 8

Ryan Davis, Stewart Says New Policies Seek

Fairness for Patent Owners, Law360, Sep. 15,

2025 ......................................................................... 10

Theresa Schliep, PTAB Petitions Continue To

Plummet As Reexams Surge, Law360, April 17,

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

Theresa Schliep, Squires Snubs 10 IPRs While 4

Pass Muster In Latest Order, Law360, April 29,

2026 ......................................................................... 15

Unified Patents, Patent Dispute Report: Q3 in

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

USITC, Section 337 Statistics: Average Length of

Investigations ........................................................... 9

USITC, Section 337 Statistics: Number of New,

Completed, and Active Investigations By Fiscal

Year ........................................................................... 9

USPTO brief in Federal Circuit Appeal

No. 2025-148 ........................................................... 30

USPTO, Interim Procedure for Discretionary Denials

in AIA Post-Grant Proceedings With Parallel

District Court Litigation, Jun. 21, 2022................. 7

Wilson Sonsini, 2023 PTAB Year in Review ............ 15

viii

INTEREST OF AMICI CURIAE

The U.S. Manufacturers Association for

Development and Enterprise is a nonprofit

association representing companies manufacturing

diverse goods in the United States.1

The Alliance for Automotive Innovation

represents the full automotive industry, including the

manufacturers producing most vehicles sold in the

United States and equipment suppliers.

The High Tech Inventors Alliance represents

leading technology providers and includes some of the

most innovative companies in the world.

The Computer & Communications Industry

Association is an international, not-for-profit trade

association representing a broad cross section of

communications and technology firms.

Association for Competitive Technology (ACT) is a

global policy trade association that represents

entrepreneurs,

innovators,

and

independent

developers within the app ecosystem that engages

with verticals across every industry.

The Software & Information Industry Association

is the principal trade association for the software and

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

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

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

made a monetary contribution in relation to the brief.

digital information industries, serving those in the

business of information.

The Business Software Alliance is the global trade

association of the enterprise software industry,

representing companies that are leaders in artificial

intelligence,

cybersecurity,

cloud

computing,

quantum, and other breakthrough technologies.

National Retail Federation is the world’s largest

retail trade association, representing retailers of all

sizes, formats, and channels of distribution and

spanning all industries.

Amici’s member companies are frequent targets of

assertions of improperly issued patents and make

routine use of the post-issuance review proceedings

authorized by the America Invents Act.

SUMMARY OF ARGUMENT

The USPTO claims the authority to override

Congress’s legislative judgment and rewrite the

terms of a statute that Congress negotiated and

enacted into law. Congress chose a one-year deadline

for filing an inter partes review petition.

See

35 U.S.C. § 315(b). It initially considered a six-month

deadline, but extended this period to one year to

ensure that infringement litigation will have

progressed far enough that the defendant can know

which claims of the patent will actually be asserted in

court. Congress also extended the deadline to ensure

that petitioners would have time to conduct a

thorough prior art search, given that they will later

be estopped from relying on any invalidity grounds

that they “reasonably could have raised” in the inter

partes review. 35 U.S.C. § 315(e)(2).

Yet the USPTO has adopted a rule that effectively

cuts the statutory one-year deadline to less than four

months in many cases—and in other cases, makes it

impossible to file at all. Since April 2025, the agency

has applied this new time limit while retroactively

repealing previous safe harbors to bar hundreds of

inter partes review petitions as “untimely” despite

being filed within the statutory deadline.

Appendix linked in the footnotes lists the petitions

that the USPTO has expressly denied because of its

retroactive changes to this rule.2

2 Appendix at pp. 6-9, available at https://perma.cc/87GY-NLXK.

The USPTO continues to apply this shortened

deadline, albeit without explaining its actions.

Several months ago, in an admitted attempt to evade

judicial review, the agency switched to a practice of

summarily denying inter partes and post-grant review

petitions, without providing any explanation at all for

its decisions.

These arbitrary changes to the § 315(b) deadline

are not the only way in which the USPTO has abused

the supposed “unreviewability” of its institution

decisions and policies. For example, it has invoked

the same immunity from review to decide that no

patent’s validity may be challenged once the patent is

six years old.

The USPTO’s actions are deeply prejudicial to

amici’s members, who face billions of dollars in

potential liability for asserted patents that the agency

improperly issued—and now refuses to correct. It was

Congress itself that decided that the opportunity to

raise invalidity defenses during infringement

litigation is not enough—that a more predictable,

technically expert validity review is needed,

particularly when critical technologies are at stake.

The lower court’s decision would afford the

USPTO discretion to ignore the statutory

framework—all based on a statute that never actually

uses the word “discretion.” The decision would also

unsettle longstanding understandings of the many

other federal statutes that use the same formulation

that the Federal Circuit now interprets as the source

of boundless discretion. And most fundamentally,

when Congress enacts a reticulated statutory

scheme—with limited safety valves—it cannot

plausibly be understood to have intended that the

statute would be merely optional for the agency to

follow.

ARGUMENT

The

USPTO’s

actions

violate

its

authorizing statute and are dismantling

the congressionally enacted system of

patent validity review.

The USPTO’s recent decisions are flatly contrary

to the terms of the statute that it is charged with

administering.

As a result, the agency has

“functionally suspended” a program that Congress

enacted to protect important sectors of the U.S.

economy.

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

deadline for seeking patent validity review at the

PTAB once infringement litigation has commenced:

“An inter partes review may not be instituted if the

petition . . . is filed more than 1 year after the date on

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

the petitioner is served with a complaint alleging

infringement of the patent.” 35 U.S.C. § 315(b).

Congress specifically chose a one-year deadline to

ensure that litigation defendants would have a

reasonable opportunity to seek review once they have

been sued—indeed, this time limit was one of the last

issues to be resolved in the final negotiations on the

AIA. The bill that first passed the Senate in 2011

would have set this deadline at six months.3 The

House, however, extended the period to one year. The

See S.23, America Invents Act, 112th Congress (2011), § 5

(proposed 35 U.S.C. § 315(b)).

Senate then acceded to this change, and it was

codified in the final law. When the bill returned to

the Senate, the bill managers explained why they

agreed to the change: they concluded that it was

“appropriate to extend the section 315(b) deadline to

one year” in order to “afford defendants a reasonable

opportunity to identify and understand the patent

claims that are relevant to the litigation,” especially

“in light of the present bill’s enhanced estoppels.”4

On February 28, 2025, however, the USPTO

adopted its current rule: an inter partes review

petition is untimely and will be “discretionarily

denied,” with no meaningful exceptions, if the timing

of its filing is such that the district court case will

likely go to trial before the review is completed.5

4 157 Cong. Rec. S5429 (daily ed. Sep. 8, 2011).

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

see

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

response to public outcry, soon created an exception to the rule

providing that a petition would not be denied if the petitioner

stipulated that it would not raise any invalidity grounds in

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

See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019 (Dec.

1, 2020). This approach was later formalized in a June 21, 2022,

memorandum. See USPTO, Interim Procedure for Discretionary

Denials in AIA Post-Grant Proceedings With Parallel District

Court

Litigation,

Jun.

21,

2022,

available

https://perma.cc/ZN92-T3SN. During the 2020 to 2025 period,

the stipulation exception to the time-to-trial rule was more or

less absolute: petitioners are aware of only one case in which a

set of petitions was denied despite the entry of such a

stipulation. Under the approach adopted by the USPTO in

March 2025, however, stipulations no longer provide any relief

from the new time-to-trial rule.

On March 28, 2025, the USPTO began applying

this new deadline retroactively to petitions that had

been filed the previous year.6 Between that date and

October 17, 2025, by amici’s count, the USPTO denied

at least 280 inter partes and post-grant review

petitions based on this new time limit.7 And again,

the USPTO did not suspend its application of this rule

after October 2025—it simply stopped providing any

explanation at all for its petition decisions.

In practice, this new time-to-trial rule

overwhelmingly bars patent defendants from seeking

validity review if they have been sued in the Eastern

District of Texas—a venue that alone accounts for

over a quarter of all patent infringement lawsuits

filed in the United States.8 Under the AIA and its

implementing regulations, an inter partes review is

scheduled to be completed 18 months after the

The USPTO has concluded,

petition is filed.9

however, that the average time to trial in the Eastern

District of Texas is about 22 months10—which means

that once a defendant is sued there, it has less than

6 See Motorola Solutions, Inc. v. Stellar, LLC, IPR2024-01205, 01206, -01207, -01208 (Mar. 28, 2025).

7 See generally Appendix, supra n.2, at 6 (listing petitions denied

as a result of the retroactive repeal of safe harbors).

8 See Ryan Davis, New Patent Suits Surge As PTAB Challenges

Get Tougher, Law360, August 4, 2026.

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

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

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

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

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

four months to prepare and file a petition under the

USPTO’s new time-to-trial rule. Of the 280 petitions

that have been expressly denied under this rule, 217

petitions—about 77%—have been denied because of

copending litigation in the Eastern District of Texas.11

In effect, the plaintiff’s choice of litigation venue

determines whether the defendant can seek validity

review at the USPTO.

In addition, the agency’s new time-to-trial rule

makes it virtually impossible to seek inter partes

review if the petitioner is the target of an enforcement

investigation at the International Trade Commission.

Such investigations are expedited—they usually are

completed in less than 18 months.12 Thus although

only a limited number of these proceeding are filed

each year,13 in 2025 they accounted for the denial of

11 For this and other reasons, this district is a favorite venue of

non-practicing patent plaintiffs, who usually acquire their

patents on the secondary market and whose patents tend to be

of low quality. The Eastern and Western Districts of Texas

account for two-thirds of all non-practicing patent plaintiff

litigation in the United States. See Unified Patents, Patent

Dispute Report: Q3 in Review, Oct. 9, 2025, available at

https://www.unifiedpatents.com/insights/2025/10/9/patentdispute-report-q3-2025-in-review.

See USITC, Section 337 Statistics: Average Length of

Investigations (updated Feb. 3, 2026), available at

https://www.usitc.gov/intellectual_property/337_statistics_aver

age_length_investigations.htm.

See USITC, Section 337 Statistics: Number of New,

Completed, and Active Investigations By Fiscal Year (updated

Feb.

2026),

available

https://www.usitc.gov/intellectual_property/337_statistics_num

ber_new_completed_and_active.htm.

25 inter partes review petitions. Notably, the USPTO

bars PTAB validity review based on the pendency of

an ITC proceeding even though such investigations

lack the authority to cancel invalid patent claims or

to preclude their enforcement in district court.14

The 280 inter partes review petitions that were

expressly rejected by the USPTO based on the new

time-to-trial rule were all denied between March 28,

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

USPTO did not suspend its application of this rule—

instead, it simply stopped providing any explanation

of its decisions to reject AIA petitions. In September

2025, in response to court challenges to the legal

justifications for the USPTO’s new rules, agency

officials stated that they “could just issue one-word

decisions denying review without explanation.” 15 In

a subsequent policy memorandum, the USPTO

Director announced that he will personally decide

each PTAB petition, and if he “determines that

institution is not appropriate, whether based on

discretionary considerations, the merits, or other non-

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

2019) (“[W]e have held that the ITC’s determination of patent

infringement and validity do not have claim or issue preclusive

effect even if affirmed by our court”); Texas Instruments Inc. v.

Cypress Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir.

1996).

Ryan Davis, Stewart Says New Policies Seek Fairness for

Patent Owners, Law360, Sep. 15, 2025.

discretionary considerations, the Director will issue a

summary notice denying institution.” 16

The first such summary denials were issued on

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

for inter partes review—each of which included up to

14,000 words of legal analysis and was accompanied

by a $23,750 nonrefundable filing fee—were

summarily denied in a notice that simply listed the

docket numbers of the petitions. Here is what these

notices look like:

Director Institution of AIA Trial Proceedings, October 17,

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

Since this initial batch of summary denials, the

USPTO has summarily denied an additional 333

petitions for inter partes and post-grant review for

what it has designated as “discretionary” reasons. No

further explanation has been provided by the agency

as to why it denied these petitions.

The reason for this change is clear: to avoid

providing a justification for the agency’s conduct that

this or any other court can review. As Professor

Dennis Crouch has noted, while “[a]n agency that

expects to defend a rule in court has to state the rule

and give reasons for it,” “[a]n agency that expects no

court to ask can stop explaining, and that is roughly

the path the Office has taken since October 2025.” 17

In addition to the time-to-trial rule, the USPTO

has invoked the unreviewability of its decisions to

impose several other procedural rules in the past year

and a half that override the AIA’s statutory

framework and make review proceedings inaccessible

for broad classes of litigation defendants.

On June 18, 2025, the agency announced and

began applying a rule that once a patent is six years

old, the patent owner acquires “settled expectations”

that the patent’s validity cannot be challenged in an

AIA proceeding.18 Notably, the average age of all the

patents that have been challenged in an inter partes

17 Dennis Crouch, Four Petitions, One Question: Tesla Joins the

Supreme Court’s IPR Reviewability Docket, PatentlyO, Jul. 30,

2026, available at https://perma.cc/XJU5-NFTN.

18 See Dabico Airport Solutions Inc v. AXA Power ApS, IPR202500408 (Jun. 18, 2025).

review in the nearly decade and a half since the AIA

was enacted is 6.7 years.19 About half of these

challenged patents would have been immune from

review under the USPTO’s new rule.20 Between June

18, 2025 and October 17, 2025, the USPTO expressly

denied 201 inter partes review petitions on the basis

of “settled expectations.”21 And again, the agency did

not suspend application of this rule after that date—

it simply stopped providing any explanation at all for

its “discretionary denial” decisions.

The USPTO also has adopter other extra-statutory

procedural bars. For example, despite the fact that

the Court of Appeals has determined that equitable

defenses such as assignor estoppel do not apply in

inter partes and post-grant reviews,22 and despite the

fact that this Court has narrowed the scope of

assignor estoppel,23 the USPTO has begun applying

the pre-2021 version of assignor estoppel to bar

petitions for AIA review.24

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

USPTO has denied 802 petitions for inter partes or

See DeFosse, J., Data Undermines USPTO’s “Settled

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

20 See id.

See Appendix at 1-6, available at https://perma.cc/87GYNLXK.

22 See Arista Networks, Inc. v. Cisco Systems, Inc., 908 F.3d 792,

803-04 (Fed. Cir. 2018).

23 See Minerva Surgical, Inc. v. Hologic, Inc., 594 U.S. 559, 576-

77 (2021).

24 See Appendix, supra n.21, at 11.

post-grant review for non-statutory “discretionary”

reasons.

Every single one of these petitions cost at least

$100,000 to prepare and file. Virtually all of them

were an important part of the petitioner’s defense to

an allegation of patent infringement.25 And all these

petitions have now been denied because of ad hoc

rules that not only are contrary to the statutory

framework, but in most cases did not even exist when

the petitions were filed.

In the past, the institution rate for AIA

proceedings was consistently about 67% and almost

all petition denials were based on the evidentiary

But since October 2025, the petition

merits.26

institution rate has plummeted to 25%.27

Unsurprisingly, “[t]he number of America Invents Act

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

25 The vast majority of AIA review petitions are filed in response

to litigation over the asserted patents. See PTAB Parallel

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

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

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

situations in which litigation has either been threatened or is

otherwise highly likely.

See PTAB Trial Statistics: 2025 End of Year Outcome

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

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

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

Theresa Schliep, Squires Snubs 10 IPRs While 4 Pass

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

27 See

policies . . . [have] settled in”28 and it has become clear

that the USPTO has “effectively shut down inter

partes review for most filers.” 29 The following chart,

which tracks all petitions filed since 2015, illustrates

the recent decline in filings:30

“Practitioners have done the math: if [inter partes

review] petitions are denied at the front end

regardless of merit, the cost-benefit calculus no longer

works.”31 By administrative fiat, the congressionally

28 Theresa Schliep, PTAB Petitions

Continue To Plummet As

Reexams Surge, Law360, April 17, 2026.

Dennis Crouch, Borrowing from the Board: District Court

Obviousness in the Post-IPR Era, PatentlyO, May 21, 2026,

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

30 See Dennis Crouch, Inter Partes Review in 2026, PatentlyO,

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

31 Id.

enacted system of patent validity review has been

“functionally suspended.”32

32 Id.

II.

This Court has recognized that when

Congress sets a deadline, that deadline

controls the question of a proceeding’s

timeliness.

In a closely analogous context, this Court has

rejected the notion that a statutory limitations period

can be overridden or further limited by other

branches of government. The Copyright Act provides

that an action for infringement must be “commenced

within three years after the claim accrued.” 17 U.S.C.

§ 507(b). Some courts, however, had adopted the view

that an action filed within that three-year window

could nevertheless be barred if, in the court’s

judgment, the copyright holder unreasonably and

prejudicially delayed in filing suit.

This Court rejected that approach in Petrella v.

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

held that to the extent that an action “seeks relief

solely for conduct occurring within the limitations

period . . . courts are not at liberty to jettison

Congress’ judgment on the timeliness of suit.” Id. at

667. When Congress adopts a statutory deadline for

filing a proceeding, “that regime leaves little place for

a doctrine that would further limit the timeliness of”

a filing. Id. at 685. This Court rejected policy

arguments for requiring earlier filing in particular

circumstances, holding that “Congress must have

been aware” of such issues and yet “chose,

nonetheless, to give” parties a set statutory period for

filing a proceeding. Id. at 683. Petrella distinguished

other statutory schemes, such as the Lanham Act,

which “contains no statute of limitations, and

expressly provides for defensive use of ‘equitable

principles, including laches.’” Id. at 678 n.15.

This Court has also made clear that “Petrella’s

reasoning applies to a similar provision of the Patent

Act.” SCA Hygiene Prods. Aktiebolag v. First Quality

Baby Prods., LLC, 580 U.S. 328, 332 (2017). SCA

Hygiene reiterates that “[w]hen Congress enacts a

statute of limitations, it speaks directly to the issue of

timeliness and provides a rule for determining

whether a claim is timely enough to permit relief.” Id.

at 334. Pertinent to what the USPTO is doing via its

time-to-trial rule, the Court held that “[t]he

enactment of a statute of limitations necessarily

reflects a congressional decision that the timeliness of

covered claims is better judged on the basis of a

generally hard and fast rule rather than the sort of

case-specific judicial determination that occurs when

a laches defense is asserted.” Id. at 334-35. SCA

Hygiene particularly emphasized that allowing

another branch of government to supplement a

statutory limitations period with its own additional

criteria for timeliness would improperly give that

body a “legislation-overriding role.” Id. at 335. The

Court held that a statute does not create “gaps” for

another branch to fill simply because that branch

concludes that a hard-and-fast deadline “could

produce policy outcomes. . . [it] deem[s] undesirable.”

Id.

The

USPTO’s

time-to-trial

rule

indistinguishable from what this Court condemned in

Petrella and SCA Hygiene. Like the Copyright Act

and other parts of the Patent Act, 35 U.S.C. § 315(b)

sets an express statutory deadline for filing a review

petition when there is copending litigation. As in

Petrella, Congress “must have been aware” of trial

courts that get to trial quickly. Indeed, by creating a

supplemental proceeding that is parallel to and

frequently results in a stay of district court litigation,

Congress cannot have made ‘speed to judgment’ its

overriding objective in designing these proceedings—

it must have known that when a inter partes review

is instituted, litigation will frequently be delayed.

Thus, just as in Petrella, when an inter partes

review petition is filed “within the limitations period,”

the agency is “not at liberty to jettison Congress’s

judgment as to the timeliness” of the petition,

Petrella, 572 U.S. at 667—that statutory time limit

“leaves little place” for policy arguments for “further

limit[s] [on] the timeliness of” the petition. Id. at 685.

And just as in SCA Hygiene, Congress chose a “hard

and fast rule”—the agency’s concerns about “policy

outcomes” do not authorize it to engage a “legislationoverriding role.” SCA Hygiene, 580 U.S. at 335.

Once Congress has negotiated and enacted a

deadline for filing a validity-review petition that runs

one year from when litigation is served, that statutory

deadline controls the question of whether the petition

is timely in relation to the litigation.

III.

PTAB petitioners—and the public—have

legitimate interests in AIA reviews that

are entitled to legal protection.

As a result of the USPTO’s retroactive application

of its new PTAB rules, there are now hundreds of

patent-infringement lawsuits going forward in the

United States in which the defendant prepared and

filed a PTAB petition challenging the validity of the

asserted patent but that the agency refused to

consider on its merits.33

There is no need to speculate as to the likely

consequences of the USPTO’s actions; recent

experience shows us exactly what will happen.

During 2020, when the USPTO experimented with an

earlier version of its time-to-trial rule,34 the rule was

applied retroactively to bar review of a series of

patents that had been asserted against Intel

Corporation. During the next two years, two of those

patents, after “discretionary” denial of review by the

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

damages awards against Intel to VLSI Technology

LLC, a non-practicing entity controlled by Fortress

33 Historically, the Board

has found a “reasonable likelihood”

that a patent is invalid and institutes review for about twothirds of petitions and has then found all claims invalid in a final

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

PTAB Trial Statistics: 2025 End of Year Outcome Roundup,

slides 7, 11, supra n.26.

34 See generally supra n.5.

Investment Group, which is majority-owned by

financial interests in Abu Dhabi.35

The next year, however, the USPTO allowed other

entities to challenge the same patents, on the same

grounds that Intel had tried to present—and

concluded that all the challenged claims are invalid

as obvious.36

In other words, the “discretionary” denial of

review allowed VLSI to go to trial and seek billions in

damages from

America’s leading-edge chip

manufacturer based on two patents that the USPTO

has now determined are invalid. This type of

litigation diverts resources away from investment in

building new chip fabs and in maintaining America’s

leadership in this critical technology.

And again, this experience is now being repeated

in hundreds of lawsuits across the country—cases in

which frequently hundreds of millions, and at times

billions, of dollars are at stake. As a broad coalition

of businesses recently warned, “[i]f these Patent

Office policies remain unchecked, they will lead to a

35 See Reuters, Intel loses U.S. patent trial, ordered to pay $2.18

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

$949M Verdict In Latest VLSI Patent Fight, Law360, Nov. 5,

2022.

36 See Intel Corp. v. VLSI Tech. LLC, IPR2021-01064 (May 12,

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

IPR2021-01229 (June 13, 2023).

systematic looting

economy.”37

the American

industrial

Nevertheless, the Federal Circuit has determined

that defendants that are sued on invalid patents do

not suffer any prejudice from the USPTO’s arbitrary

restrictions on access to AIA reviews—even when

these rules are applied retroactively—because a

defendant remains free “to properly raise its

patentability defenses elsewhere.”38

AIA reviews, however, are the only contested

proceedings in which an issued patent can be

evaluated by the USPTO’s technical experts. Courts

have long recognized the benefits of applying such

expertise to the difficult scientific questions that often

arise in patent cases.39

37 See Adam Lidgett, Industry Groups Want Trump Admin To

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

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

39 See, e.g., Cochrane v. Deener, 94 U.S. 780, 784 (1876) (“Neither

courts nor ordinary juries are perfectly adapted to the

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

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

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

1911) (Hand, J.) (noting the challenges of ruling on a chemical

patent case “without any knowledge of even the rudiments of

chemistry,” and suggesting the creation of a tribunal of

“technical judges to whom technical questions are submitted”);

the Honorable Alan D Albright, U.S. District Judge (W.D. Tex.)

(“[N]ever, ever, ever, ever, ever offer an obviousness argument

to a jury,” as the jury will not understand it.) (quoted in Dani

And more fundamentally, it is Congress itself that

decided that the opportunity to raise validity defenses

during infringement litigation is not enough.

Although civil litigation over patent validity has

always been available, in 1980 Congress authorized—

and thereafter repeatedly reenacted and refined—

The

post-issuance review at the USPTO. 40

proceedings serve the “important congressional

objective” of applying the USPTO’s expertise to

“revisit and revise earlier patent grants,” Cuozzo

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

thereby

addressing

“overpatenting

and

its

diminishment of competition.” Thryv, Inc v. Click-ToCall Techs., LP, 590 U.S. 45, 54 (2020).

Kass, What Judges Want You to Know: Litigate Smarter,

Law360, Feb. 11, 2025).

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

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

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

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

authorizing reexamination of patents); Weekly Compilation of

Presidential Documents, President Jimmy Carter, Dec. 12, 1980,

Vol. 16, No. 50 (Statement on Signing H.R. 6933 into Law)

(“Patent reexamination will . . . . improve the reliability of

reexamined patents, thereby reducing the costs and

uncertainties of testing patent validity in the courts.”).

IV.

The statutory framework for patentvalidity reviews is not merely optional for

the agency to follow.

Section 314—“the section housing the command to

the Director to ‘determine whether to institute,’”

Thryv, 590 U.S. at 57—does not actually use the word

“discretion.” The Court of Appeals has nevertheless

identified unbounded discretion in the statute

because its institution-threshold determination is

stated in the negative—the Director “may not

authorize an inter partes review to be instituted . . .

unless [the meris threshold is met].” 35 U.S.C.

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

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

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

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

2021) (emphasis added). Under this construction, the

statutory requirements merely set a floor that can be

revised upward—the agency has unlimited discretion

to impose conditions more demanding than those that

Congress enacted. Such a construction ignores the

statute and robs Congress of its authority.

The Federal Circuit’s interpretation

would wreak havoc with other

federal statutes.

The “may not . . . unless” statutory formulation is

hardly unique to the America Invents Act. Many

other federal statutes that establish rules for agencies

to follow employ the same language. And particularly

when these statutes set rules for regulating private

parties’ conduct or proceedings, it should be obvious

that Congress did not intend that its codified criteria

for agency decisionmaking would serve as a mere

polite suggestion to the agency.

Several statutes use this formulation to set rules

for an agency to apply when regulating the licensure

of various businesses and professions. The words

“may not . . . unless” govern the application of the

statutory standards that determine who may operate

the businesses of providing passenger transportation

between maritime ports,41 processing or catching

fish,42 providing certain telecommunication or

information services,43 broadcasting low-power

television signals,44 operating an insured State

bank,45 originating loans,46 or selling motor

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

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

§ 40901(a).

42 See 46 U.S.C. § 4503(a) (“A vessel

to which this subsection

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

(“No high seas fishing vessel shall engage in harvesting

operations on the high seas unless”).

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

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

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

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

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

class A license . . . unless”).

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

as principal in any type of activity that is not permissible for a

national bank unless”).

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

business of a loan originator without first”).

vehicles.47 The same statutory formulation also

governs whether health-care professionals under

military jurisdiction may work in their professions.48

The persons regulated under these statutes may

believe that their right to pursue their livelihoods is

determined by the conditions established in the

statutes. Under the Federal Circuit’s construction,

however, the regulating agency “is never compelled”

to allow them to do so. Mylan, 989 F.3d at 1382. The

agencies would be free to elevate the statutory

requirements or to impose additional conditions—a

fishing vessel, for example, could also be required by

the agency to pay for and carry a government-certified

third-party observer to ensure compliance with the

agency’s rules—regardless of what the statute says.

Persons facing federal or state criminal

punishment may also find themselves at a

disadvantage under the Federal Circuit’s interpretive

approach. Such persons may believe that they can

appeal their conviction or sentence upon making “a

substantial showing of the denial of a constitutional

right,”49 but the relevant statutes’ use of “may not . . .

unless” would indicate, per the decision below, that

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

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

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

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

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

the Secretary of a military department may not provide health

care independently as a health-care professional under this

chapter unless”).

49 28 U.S.C. § 2253(c)(2).

this is only a floor—other conditions may also be

imposed on the right to appeal.50

Private landlords could find that they are never

allowed to increase rents;51 candidates for office that

they can never use campaign funds to travel by air;52

certain overseas tort claimants could never seek

relief;53 and customer claims could never be

subordinated in bankruptcy54—all because Congress

gave an agency or tribunal discretion to depart from

statutory standards by using the words “may not . . .

unless.”

The same statutory wild card even applies to other

aspects of intellectual-property law. The Copyright

Claims Board would never be required to entertain a

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

certificate of appealability, an appeal may not be taken to the

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

proceeding [challenging State or Federal detention]”).

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

increase in rental payments . . . unless”).

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

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

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

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

this section unless”).

54 11 U.S.C. § 747 (“unless all other customer net equity claims

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

equity claim of a customer”).

claim55 and the USPTO would never be required to

allow a patent applicant to claim priority to its

provisional application56 under the Federal Circuit’s

statutory construction.

If the decision below is correct, then all these

statutes vest their administrators with unbridled

power over the American people. For all these

statutory schemes to operate within the specified

legal constraints—as Congress obviously intended—

then only the decision below need be wrong.

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

infringement of an exclusive right in a copyrighted work may not

be asserted before the Copyright Claims Board unless”); id.

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

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

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

the Patent and Trademark Office unless”).

Inter partes review’s statutory

safety valve confirms that broad

“resources” discretion was not

intended by Congress.

The USPTO has suggested that “resource

constraints” compel it to arbitrarily restrict access to

AIA reviews.57 That justification is inconsistent with

the structure Congress established. The statute itself

requires the agency to set fees for the proceedings

that are adequate to cover the “aggregate costs” of

conducting the reviews.58 There is no question that

the fees that the USPTO has been collecting have

been sufficient for this purpose.

Moreover, AIA proceedings are not enforcement

proceedings in which the agency investigates and

prepares its case. They are adjudicative proceedings

in which the petitioner develops the evidence and

brings the case to the agency—the PTAB simply

decides whether the petitioner has met its burden of

proof. There can be no dispute that the USPTO can

address the merits of every PTAB petition that is

presented to it—it did address the merits of almost

every petition prior to the agency’s recent enthusiasm

for “discretionary denials.”

Finally, the statute itself provided a resources

safety valve during the initial years of standing up the

proceedings. Titled “Graduated Implementation,”

57 See, e.g., USPTO Brief in Federal Circuit Appeal No. 2025-148,

at 32.

58 See 35 U.S.C. §§ 311(a), 321(a).

this provision authorized the Director to “impose a

limit on the number of inter partes reviews that may

be instituted . . . during each of the first 4 1-year

periods [that the proceedings] are in effect.”59 The

fact that Congress enacted this provision—which was

never used and expired in 2016—confirms that it did

not understand the AIA to otherwise vest the Director

with unlimited authority to impose extra-statutory

restrictions on access to AIA proceedings.

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

CONCLUSION

The petition for certiorari should be granted.

Respectfully submitted,

Joseph Matal

CLEAR IP, LLC

888 16th St., NW

Suite 300

Washington, DC 20006

(202) 654-4500

Joseph.Matal@clearpatents.com

Counsel for Amici Curiae

Dated: August 28, 2026

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.