Amicus Curiae Brief — Kahoot! AS, Petitioner v. Interstellar Inc., et al.

No. 26-198

In the Supreme Court of the United States

─────────────i─────────────

KAHOOT! AS,

Petitioner,

v.

INTERSTELLAR INC., ET AL.,

Respondents.

____________________________

ON PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

BRIEF OF THE SOFTWARE &

INFORMATION INDUSTRY ASSOCIATION,

BUSINESS SOFTWARE ALLIANCE,

US*MADE, ALLIANCE FOR AUTOMOTIVE

INNOVATION, HIGH TECH INVENTORS

ALLIANCE, COMPUTER &

COMMUNICATIONS INDUSTRY

ASSOCIATION, ASSOCIATION FOR

COMPETITIVE TECHNOLOGY (ACT), AND

NATIONAL RETAIL FEDERATION AS AMICI

CURIAE IN SUPPORT OF PETITIONER

September 16,

2026

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

QUESTION PRESENTED

The America Invents Act (AIA) authorizes

administrative proceedings for the review of the

validity of issued patents. The Act authorizes postgrant review, in which a patent may be challenged on

all validity grounds during the period between the

patent’s issuance and “the date that is 9 months after

the[at] date.” 35 U.S.C. § 321(c). The Act also

authorizes inter partes review, in which a patent may

be challenged on printed prior art grounds during the

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

after the grant of a patent” or “the termination of [an

instituted] post-grant review.” Id. § 311(c). Finally,

the Act prohibits the filing of a petition for inter partes

review “more than 1 year after the date on which [the

challenger] is served with a complaint alleging

infringement of the patent.” Id. § 315(b).

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

instituted unless” these conditions are met, id.

§§ 314(a), 324(a), and it provides that the decision

“whether to institute a . . . review” is “final and

nonappealable.” Id. §§ 314(d), 324(e).

The question presented by this case is, do the

latter two provisions render all the other statutory

provisions described here merely optional for the

agency to follow—that is, may the Patent Office

redefine the temporal scope of the patents that may

be challenged in an inter partes review?

i

TABLE OF CONTENTS

TABLE OF AUTHORITIES .................................. III

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

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

ARGUMENT ................................................................ 5

I.

The USPTO’s actions violate its

authorizing statute and are dismantling

the congressionally enacted system of

patent validity review. ................................... 5

II.

PTAB petitioners—and the public—have

legitimate interests in AIA reviews that

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

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

the agency to follow. ..................................... 22

A.

The Federal Circuit’s interpretation

would wreak havoc with other federal

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

B.

Inter partes review’s statutory safety

valve confirms that broad “resources”

discretion was not intended by

Congress. ...................................................... 27

CONCLUSION .......................................................... 29

ii

TABLE OF AUTHORITIES

CASES

Apple Inc. v. Gesture Technology Partners, LLC, 127

F.4th 364 (Fed. Cir. 2025) ....................................... 7

Apple Inc. v. Vidal, 63 F.4th 1 (Fed. Cir. 2023) ....... 23

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

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

Cochrane v. Deener, 94 U.S. 780 (1876).................... 21

Cuozzo Speed Techs., LLC v. Lee,

579 U.S. 261 (2016) ................................................ 22

In re Motorola Sols., 159 F.4th 30 (Fed. Cir. 2025) . 21

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).............................................. 23

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

(C.C.S.D.N.Y. 1911)................................................ 21

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

(1996) ....................................................................... 14

SAS Institute, Inc. v. Iancu, 584 U.S. 357 (2018) .... 28

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

(2020) ................................................................. 22, 23

STATUTES AND REGULATIONS

7 U.S.C. § 2262a(b) ..................................................... 26

10 U.S.C. § 1094(a)(1) ................................................ 25

11 U.S.C. § 747 ........................................................... 26

iii

12 U.S.C. § 1831a ....................................................... 25

12 U.S.C. § 5103(a) ..................................................... 25

16 U.S.C. § 5503(a) ..................................................... 24

28 U.S.C. § 2253(c) ..................................................... 26

35 U.S.C. § 119(e)(2) ................................................... 27

35 U.S.C. § 154(a)(2) .................................................... 6

35 U.S.C. § 286 ............................................................. 6

35 U.S.C. § 311(a) ....................................................... 28

35 U.S.C. § 314(a) ....................................................... 23

35 U.S.C. § 315(b) ....................................................... 12

35 U.S.C. § 316(e) ....................................................... 28

35 U.S.C. § 321(c) ......................................................... 6

42 U.S.C. § 1490j ........................................................ 26

46 U.S.C. § 4503(a) ..................................................... 24

46 U.S.C. § 55103(a) ................................................... 24

47 U.S.C. § 272(a)(1) .................................................. 24

47 U.S.C. § 336(f)(7) ................................................... 25

49 U.S.C. § 30112(a)(1) .............................................. 25

52 U.S.C. § 30114(c)(1) ............................................... 26

Pub. L. No. 112-29 (2011) .......................................... 29

iv

PTAB DECISIONS

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

(PTAB 2020)............................................................ 13

Intel Corp. v. Proxense LLC, IPR2025-00327 (Jun.

26, 2025). ................................................................... 7

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

12, 2023) .................................................................. 20

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

IPR2021-01229 (June 13, 2023) ............................ 20

Tesla, Inc. v. Intellectual Ventures II LLC, IPR202500217 (June 13, 2025) .............................................. 8

Verizon Connect Inc. v. Omega Patents LLC,

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

LEGISLATIVE MATERIALS

H.R. Rep. No. 96-1307, 96th Cong. (1980) ............... 22

Weekly Compilation of Presidential Documents,

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

No. 50....................................................................... 22

OTHER AUTHORITIES

Adam Lidgett, Industry Groups Want Trump Admin

To Stop PTAB Changes, Law360, Nov. 4, 2025... 21

Boetticher, E., Unsettling Expectations: Avoiding

Discretionary Denial of IPR Petitions,

Sept. 9, 2025 ............................................................. 8

Britain Eakin, Intel Hit With $949M Verdict In

Latest VLSI Patent Fight,

Law360, Nov. 5, 2022 ............................................. 20

v

Dani Kass, What Judges Want You to Know:

Litigate Smarter, Law360, Feb. 11, 2025 ............ 22

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

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

2025 ........................................................................... 9

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

Dennis Crouch, Inter Partes Review in 2026,

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

Director Institution of AIA Trial Proceedings,

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

Jones, F., et al., Unpacking the PTAB’s Patent Age

Denial Doctrine Data, Aug. 29, 2025 ...................... 7

Patent Trial and Appeal Board Parallel Litigation

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

PTAB Trial Statistics: 2025 End of Year Outcome

Roundup ............................................................ 16, 19

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

$2.18 billion to VLSI Tech, Mar. 2, 2021 ............. 20

Ryan Davis, Stewart Says New Policies Seek

Fairness for Patent Owners, Law360, Sep. 15,

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

Theresa Schliep, PTAB Filings Crashed After

Squires And Stewart's Shake-Ups, Law360, Aug.

5, 2026 ..................................................................... 17

vi

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 ......................................................................... 16

USPTO brief in Federal Circuit Appeal

No. 2025-148 ........................................................... 28

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

vii

INTEREST OF AMICI CURIAE

The Software & Information Industry Association

is the principal trade association for the software and

digital information industries, serving those in the

business of information.1

The U.S. Manufacturers Association for

Development and Enterprise is a nonprofit

association representing companies manufacturing

diverse goods in the United States.

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

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

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

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

made a monetary contribution in relation to the brief. Although

Kahoot! is a member of SIIA, it did not participate in the decision

to file this brief.

1

entrepreneurs,

innovators,

and

independent

developers within the app ecosystem that engages

with verticals across every industry.

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.

2

SUMMARY OF ARGUMENT

The USPTO makes a breathtaking claim of

authority: that it can literally rewrite the terms of its

enabling statute. Post grant review is available by

law for patents during the first “9 months after” the

“grant of the patent,” 35 U.S.C. § 321(c), and inter

partes review is available “after the later of . . . 9

months after the grant” or “termination of [a] postgrant review.” Id. § 311(c). Patents last for 20 years

and are enforceable for another six years after they

expire. Since Congress enacted the America Invents

Act in 2011, the USPTO and the courts had

recognized that inter partes review is available for the

entirety of this period of enforceability (“after” the

availability of post-grant review).

In June 2025, however, the USPTO announced a

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

patent owner acquires “settled expectations” that

prevent anyone from challenging the patent in an

inter partes review. In the ensuing months, the

agency applied this rule retroactively to reject

virtually every single petition before it that sought to

challenge a patent that was more than six years old.

An appendix linked in the footnotes lists the 201 inter

partes review petitions that the USPTO expressly

denied on “settled expectations” grounds without

considering the merits.2

The USPTO continues to apply this rule, albeit

without explaining its actions. Several months ago,

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

3

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 inter partes review’s

temporal scope 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

shorten the one-year statutory deadline for filing a

petition after litigation has been served.

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.

4

ARGUMENT

I.

The

USPTO’s

actions

violate

its

authorizing statute and are dismantling

the congressionally enacted system of

patent validity review.

It would be hard to overstate the violence that the

USPTO’s leadership has done to America Invents Act

patent reviews during the past year and a half.

On June 18, 2025, the agency announced and

began applying the rule at issue in this case: that once

a certain number of years have passed since a patent

has issued, the patent owner acquires “settled

expectations” that the patent’s validity cannot be

challenged in AIA proceedings.3

A patent’s term runs twenty years from its filing

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

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

of the “settled expectations” rule, the agency had

followed the statutory framework:6 it allowed patents

to be challenged in post-grant reviews during the first

nine months after their issuance, and in inter partes

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

4 See 35 U.S.C. § 154(a)(2).

5 See 35 U.S.C. § 286.

6 See 35 U.S.C. §§ 321(c), 311(c).

5

reviews throughout the remainder of the time that

the patent can be enforced.7

The USPTO has not stated how old a patent must

be before “settled expectations” attach,8 but in

practice, the rule appears to be six years. The USPTO

purported to derive its rule from 35 U.S.C. § 286’s sixyear limit on recovery of past infringement damages,9

which has nothing to do with the timing of inter partes

review. In the months after the rule was announced,

the USPTO denied 201 petitions for inter partes

review based on “settled expectations.”10 Amici are

aware of only a handful of cases in which a petition

challenging a patent that was more than five years

old was able to overcome this new bar.11

7 See USPTO, PTAB Trials: Inter Partes Review, available at

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

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

that “the Board has jurisdiction over [inter partes reviews]

concerning expired patents”).

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

when expectations become settled, in general, the longer the

patent has been in force, the more settled expectations should

be.”).

9 See id. at 3 (“This approach aligns with other approaches to

settled expectations and incentives, for example, for filing

infringement lawsuits.”).

See Appendix of Denied PTAB Petitions, available at

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

10

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

Doctrine

Data,

Aug.

29,

2025,

available

at

https://perma.cc/M65X-UCW9 (“For patents six years and older,

11

6

In Intel Corp. v. Proxense LLC,12 the USPTO

provided “guidance” that older patents can be

reviewed despite “settled expectations” if the

petitioner either identifies “a significant change in the

law” or shows that the patent was never

“commercialized” or “licensed.” 13 As one commentator

has noted, however, these exceptions “have proven to

be largely ineffective in practice.” 14 The latter

exemption appears to have been successfully invoked

only three times,15 and the “change in the law” proviso

even less16—amici are not aware of any case in which

the vast majority has settled expectations supporting denial.

Conversely, for patents four years and younger, almost all

supported referral for an institution decision. For five-year-old

patents, the decisions remain split.”) (analyzing 249 petition

decisions).

In this case, Kahoot! filed its petition on March 7, 2025, less than

six years after the challenged patent issued, but the USPTO

nevertheless denied institution because the patent had crossed

the six-year mark by the time that the USPTO decided

institution. Notably, the patent owner waited nearly five years

after the patent issued before asserting the patent against

Kahoot!, yet Kahoot! is now barred from challenging the patent’s

validity based on the patent owner’s own “settled expectations.”

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

13 Id.

Boetticher, E., Unsettling Expectations: Avoiding

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

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

14

15 See id.

16 See id. (“To date, no petitioner has successfully applied [the

‘change in the law’ exception] to overcome settled expectations.”).

7

it has been applied to allow PTAB review of a utility

patent that is more than five years old.17

Thus as a practical matter, under the USPTO’s

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

be contested in an AIA review once the patent is six

years old. Notably, the average age of all the patents

that have been challenged in an inter partes review in

the decade and a half since the AIA was enacted is 6.7

years.18 About half of these challenged patents would

have been immune from review under the USPTO’s

new rule.19

The 201 inter partes review petitions that were

expressly rejected by the USPTO based on “settled

expectations” were all denied between June 18, 2025,

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

did not suspend its application of this rule—instead,

it simply stopped providing any explanation of its

decisions to reject AIA petitions. In September 2025,

in response to court challenges to the legal

justifications for the USPTO’s new rules, agency

officials stated that they “could just issue one-word

Similarly, although the USPTO has designated as

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

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

expectations” to be overcome by a showing that the patent owner

had asserted “a large number of patents from different

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

additional petitioners appear to have benefited from this

administrative grace.

17

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

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

18

19 See id.

8

decisions denying review without explanation.” 20 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 nondiscretionary considerations, the Director will issue a

summary notice denying institution.” 21

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:

Ryan Davis, Stewart Says New Policies Seek Fairness for

Patent Owners, Law360, Sep. 15, 2025.

20

Director Institution of AIA Trial Proceedings, October 17,

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

21

9

Since this initial batch of summary denials, the

USPTO has summarily denied an additional 335

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.” 22

In addition to the “settled expectations” 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.

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). On

22 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.

11

February 28, 2025, however, the agency announced

and began applying a rule that a petition must be filed

early enough that the 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.23

Between February 28, 2025, and October 17, 2025,

the agency retroactively applied this new rule to deny

as “untimely” 280 inter partes and post-grant review

petitions that had been filed within the one-year

statutory deadline.24 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 adopted other extrastatutory procedural bars. For example, despite the

fact that the Court of Appeals has determined that

equitable defenses such as assignor estoppel do not

See Brief of US*MADE in Tesla, Inc. v. Granite Vehicle

Ventures LLC, No. 26-136, at 6-10.

23

See generally Appendix, supra n.10, at 6 (listing petitions

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

24

12

apply in inter partes and post-grant reviews,25 and

despite the fact that this Court has narrowed the

scope of assignor estoppel,26 the USPTO has begun

applying the pre-2021 version of assignor estoppel to

bar petitions for AIA review.27

Another provision of the Patent Act estops the

petitioner in a completed inter partes or post-grant

review from challenging the same patent claims in a

future judicial or administrative proceeding. 28 This

statutory estoppel is extended to “real parties in

interest and privies” of the petitioner 29—terms that

are recognized as common-law exceptions to the dueprocess bar on “bind[in] litigants to a judgment

rendered in an earlier litigation to which they were

not parties.”30 On May 2, 2025, however, the USPTO

implemented and began applying a new rule that if a

patent’s validity is challenged in any forum by any

party, all other parties are thereafter estopped from

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

803-04 (Fed. Cir. 2018).

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

77 (2021).

27 See Appendix, supra n.10, at 11.

28 See 35 U.S.C. §§ 315(e), 325(e).

29 Id.

30 Richards v. Jefferson County, Ala., 517 U.S. 793, 794 (1996);

see also id. at 798 (“[T]here is an exception [to this due-process

bar] when it can be said that there is ‘privity’ between a party to

the second case and a party who is bound by an earlier

judgment.”).

13

challenging the patent in an AIA proceeding.31 This

new estoppel extends to third parties with no

relationship at all to the earlier challenger, and

includes third parties who were first sued—or even

first learned of the patent—years after the earlier

proceedings had been completed. During 2025, the

USPTO denied at least 21 petitions based on this new

third-party estoppel.32

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

USPTO has denied 804 petitions for inter partes or

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.33 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.

31 See Verizon Connect

Inc. v. Omega Patents LLC, IPR2023-

01162 (May 2, 2025).

32 See Appendix, supra n.10, at 10.

33 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.

14

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.34

institution rate has plummeted to 25%.35

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

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

policies . . . [have] settled in”36 and it has become clear

that the USPTO has “effectively shut down inter

partes review for most filers.” 37 The following chart,

which tracks all petitions filed since 2015, illustrates

the recent decline in filings:38

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.

34

Theresa Schliep, Squires Snubs 10 IPRs While 4 Pass

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

35 See

36 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.

37

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

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

15

Another chart illustrates the collapse in inter

partes review petition filings since the beginning of

2024:39

39 See Theresa Schliep, PTAB Filings Crashed After Squires And

Stewart’s Shake-Ups, Law360, Aug. 5, 2026.

16

“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.”40 By administrative fiat, the congressionally

enacted system of patent validity review has been

“functionally suspended.”41

40 Crouch, supra n.38.

41 Id.

17

II.

PTAB petitioners—and the public—have

legitimate interests in AIA reviews that

are entitled to legal protection.

As a result of the USPTO’s retroactive application

of its new PTAB rules, there are now hundreds of

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 the agency refused to consider the

petition on its merits.42

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, 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

42 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.34.

18

Investment Group, which is majority-owned by

financial interests in Abu Dhabi.43

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.44

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, “[if]f these Patent

Office policies remain unchecked, they will lead to a

43 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.

44 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).

19

systematic looting

economy.”45

of

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.”46

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.47

45 See Adam Lidgett, Industry Groups Want Trump Admin To

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

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

47 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

20

And more fundamentally, it is Congress itself that

decided that the opportunity to raise invalidity

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. 48

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.”).

48

21

III.

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 merits 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.

A.

The Federal Circuit’s interpretation

would wreak havoc with other

federal statutes.

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

hardly unique to the America Invents Act. Many

other federal statutes that establish rules for agencies

to follow employ the same language. And particularly

when these statutes set rules for regulating private

parties’ conduct or proceedings, it should be obvious

that Congress did not intend that its codified criteria

22

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,49 processing or catching

fish,50 providing certain telecommunication or

information services,51 broadcasting low-power

television signals,52 operating an insured State

bank,53 originating loans,54 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).

49

50 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”).

51

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

class A license . . . unless”).

53 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”).

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

business of a loan originator without first”).

23

vehicles.55 The same statutory formulation also

governs whether health-care professionals under

military jurisdiction may work in their professions.56

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

unless” would indicate, per the decision below, that

55 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”).

56 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”).

57 28 U.S.C. § 2253(c)(2).

24

this is only a floor—other conditions may also be

imposed on the right to appeal.58

Private landlords could find that they are never

allowed to increase rents;59 candidates for office that

they can never use campaign funds to travel by air;60

certain overseas tort claimants could never seek

relief;61 and customer claims could never be

subordinated in bankruptcy62—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

58 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]”).

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

increase in rental payments . . . unless”).

60 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”).

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

this section unless”).

62 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”).

25

claim63 and the USPTO would never be required to

allow a patent applicant to claim priority to its

provisional application64 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

Copyright Claims Board unless”).

63

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”).

64

26

B.

Inter partes review’s statutory

safety valve confirms that broad

“resources” discretion was not

intended by Congress.

The USPTO has suggested that “resource

constraints” compel it to arbitrarily restrict access to

AIA reviews.65 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.66 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.67 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

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

at 32.

66 See 35 U.S.C. §§ 311(a), 321(a).

67 See 35 U.S.C. § 316(e) (“the petitioner shall have the burden of

proving a proposition of unpatentability”); SAS Institute, Inc. v.

Iancu, 584 U.S. 357, 364 (2018) (noting that inter partes review

is “a party-directed, adversarial process”—“it’s the petitioner,

not the Director, who gets to define the contours of the

proceeding”).

27

every petition prior to the agency’s recent enthusiasm

for “discretionary denials.”

Finally, the statute itself provided a resources

safety valve during the initial years of standing up the

proceedings. Titled “Graduated Implementation,”

this provision authorized the Director to “impose a

limit on the number of inter partes reviews that may

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

periods [that the proceedings] are in effect.”68 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.

68 America Invents Act, Pub. L. No. 112-29 (2011), § 6(c)(2)(B).

28

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: September 16, 2026

29