Amicus Curiae Brief — Kahoot! AS, Petitioner v. Interstellar Inc., et al.
Supreme Court briefSep 16, 2026
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No. 26-198
IN THE
Supreme Court of the United States
KAHOOT! AS,
v.
Petitioner,
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 AMICI CURIAE
38 INTELLECTUAL PROPERTY
LAW PROFESSORS
IN SUPPORT OF PETITIONER
Mark A. Lemley
William H. Neukom
Professor of Law
STANFORD LAW SCHOOL
559 Nathan Abbott Way
Stanford, CA 94305
(650) 723-4605
mlemley@law.stanford.edu
Phillip R. Malone
Counsel of Record
Nina K. Srejovic
JUELSGAARD INTELLECTUAL
PROPERTY AND
INNOVATION CLINIC
MILLS LEGAL CLINIC AT
STANFORD LAW SCHOOL
559 Nathan Abbott Way
Stanford, CA 94305
(650) 725-6369
pmalone@stanford.edu
Counsel for Amici Curiae
TABLE OF CONTENTS
INTEREST OF AMICI CURIAE................................. 1
SUMMARY OF ARGUMENT ..................................... 1
ARGUMENT ................................................................ 2
I.
The PTO Has Disregarded the Patent Act to
Invent a New Policy Insulating the Vast
Majority of Patents from Any IPR Review........... 2
II. The “Settled Expectations” Policy Makes
PTAB Review of Most Patents (and the Most
Important Patents) Impossible ............................. 5
III. The “Settled Expectations” Policy Undermines
Congress’s Carefully Crafted IPR System ........... 7
IV. The “Settled Expectations” Policy Cannot Be
Squared with the Statutory Scheme .................... 9
V. This Issue Is Important and Recurring, and
Certiorari Is the Only Way to Ensure That the
PTO Follows the Law .......................................... 15
CONCLUSION........................................................... 17
APPENDIX A—LIST OF AMICI CURIAE .............A-1
ii
TABLE OF AUTHORITIES
Page(s)
Cases
Amgen Inc. v. Bristol-Myers Squibb Co.,
Nos. IPR2025-00601, -00602
& -00603, 2025 WL 2086050
(P.T.A.B. July 24, 2025) ......................................... 4
In re Cambridge Indus. USA Inc.,
No. 2026-101, 2025 WL 356129 (Fed.
Cir. Dec. 9, 2025) ............................................ 10, 15
Cuozzo Speed Techs., LLC v. Lee,
579 U.S. 261 (2016) ........................................ 11, 15
Dabico Airport Sols. Inc. v. AXA Power
ApS, No. IPR2025-00408, 2025 WL
1710080 (P.T.A.B. June 18, 2025) ......................... 4
Geotab Inc. v. Fractus, S.A.,
Nos. IPR2025-00928 & -00929, 2025
Pat. App. LEXIS 5219, at *2
(P.T.A.B. Sep. 12, 2025) ........................................ 3
In re Kahoot! AS,
2026-119, 2026 WL 519635 (Fed. Cir.
Feb 25, 2026) ........................................................ 15
Ingenico Inc. v. IoEngine, LLC,
136 F.4th 1354 (Fed. Cir. 2025) ........................... 13
iii
iRhythm Techs., Inc. v. Welch Allyn,
Inc., Nos. IPR2025-00363, -00374, 00376, -00377 & -00378, 2025 WL
1605274 (P.T.A.B. June 6, 2025) ........................... 2
Kahoot! AS v. Interstellar, Inc.,
No. IPR2025-00696, 2025 WL
2176613 (P.T.A.B. July 31, 2025) .......................... 2
Magnolia Med. Techs., Inc. v. Kurin,
Inc., No. IPR2026-00097, 2026 WL
1348926 (P.T.A.B. May 14, 2026) .................... 4, 13
Martin v. Franklin Cap. Corp.,
546 U.S. 132 (2005) .............................................. 11
Oil States Energy Servs., LLC v.
Greene’s Energy Grp., LLC,
584 U.S. 325 (2018) .............................................. 15
OSG Bulk Ships, Inc. v. United States,
132 F.3d 808 (D.C. Cir. 1998) .............................. 16
Return Mail, Inc. v. U.S. Postal Serv.,
587 U.S. 618 (2019) .............................................. 15
In re Sandisk Techs., Inc.,
No. 2025-152, 2025 WL 3526507
(Fed. Cir. Dec. 9, 2025) ......................................... 16
SAS Inst., Inc. v. Iancu,
584 U.S. 357 (2018) ...................... 7, 8, 9, 11, 14, 15
SCA Hygiene Prods. Aktiebolag v. First
Quality Baby Prods., LLC,
580 U.S. 328 (2017) .............................................. 10
iv
Taiwan Semiconductor Mfg. Co. v.
Advanced Integrated Cir. Process,
LLC, No. IPR2025-00682, 2025 WL
2369005 (P.T.A.B. Aug. 14, 2025) .......................... 6
Thryv, Inc. v. Click-to-Call Techs., LP,
590 U.S. 45 (2020) .......................................... 15, 16
United States v. Arthrex, Inc.,
594 U.S. 1 (2021) .................................................. 15
Zhuhai CosMX Battery Co. v. Ningde
Amperex Tech. Ltd.,
No. IPR2025-00405, 2025 WL
2939499 (P.T.A.B. Oct. 15, 2025) ......................... 13
Statutes
35 U.S.C. § 311(c)(1) .......................................... 5, 9, 14
35 U.S.C. § 314(a) ................................................ 11, 13
35 U.S.C. § 314(d) ...................................................... 10
35 U.S.C. § 315(b) .................................................. 9, 14
35 U.S.C. § 315(e) ................................................ 13, 14
Other Authorities
Adam Cook, Matthew Johnson & Daniel
Sloan, Discretionary Denial
Statistics, JD Supra (Oct. 16, 2025),
https://perma.cc/7EKX-GJP6 ................................. 3
v
Adam B. Jaffe & Josh Lerner,
Innovation and Its Discontents: How
Our Broken Patent System Is
Endangering Innovation and
Progress, and What to Do
About It (2004) ........................................................ 8
AIPLA, 2025 Report of the Economic
Survey (2026),
https://perma.cc/J66G-EWQZ ................................ 9
Brian J. Love, An Empirical Study of
Patent Litigation Timing: Could a
Patent Term Reduction Decimate
Trolls Without Harming Innovators?,
161 U. Pa. L. Rev. 1309 (2013) .............................. 5
Christian Helmers & Brian J. Love,
Patent Validity and Litigation:
Evidence from U.S. Inter Partes
Review, 66 J.L. & Econ. 53 (2023) ....................... 14
Dani Kass, Squires’ Institution Flips
Are Increasing Uncertainty at
PTAB, Law360 (May 26, 2026),
https://perma.cc/3TTP-E3BU ................................. 6
Dennis Crouch, An Era of No: The PTO’s
New 0% Institution Rate, Patently-O
(Nov. 12, 2025),
https://perma.cc/UPD4-D7MM .............................. 4
Dennis Crouch, Decimation: Ex Parte
Reexamination Eclipses the IPR,
Patently-O (May 2, 2026)
https://perma.cc/5ERP-NCAP ................................ 6
vi
H.R. Rep. No. 112-98 (2011) ........................................ 8
House Judiciary GOP, Oversight of the
U.S. Patent and Trademark Office
(YouTube, Mar. 25, 2026),
https://perma.cc/9R9F-86HC ............................... 12
Jason Engel & Erik Halverson, USPTO
Proposes Rule Changes to Refocus
Inter Partes Review Proceedings,
K&L Gates IP Law Watch (Oct. 17,
2025), https://perma.cc/T8B4-FXXL .................... 13
John R. Allison, Mark A. Lemley &
David L. Schwartz, Understanding
the Realities of Modern Patent
Litigation, 92 Tex. L. Rev. 1769
(2014) ...................................................................... 8
Joseph Farrell & Robert P. Merges,
Incentives to Challenge and Defend
Patents: Why Litigation Won’t
Reliably Fix Patent Office Errors and
Why Administrative Patent Review
Might Help, 19 Berkeley Tech. L.J.
943 (2004) ............................................................... 7
Kathi Vidal, PTAB Discretionary Denial
Decisions Since 6/25/2025 (2026),
https://perma.cc/SRT9-JVQY ................................. 3
Mark A. Lemley, Patent Law’s (ShortLived?) Era of Normalcy, 103 Wash.
U. L. Rev. 1619 (2026) ......................................... 14
vii
Mark A. Lemley, Rational Ignorance at
the Patent Office, 95 Nw. U. L. Rev.
1495 (2001) ............................................................. 7
Mark A. Lemley & Jason Reinecke, Our
More-Than-Twenty-Year Patent
Term, 39 Berkeley Tech. L.J. 681
(2024) ...................................................................... 5
Melissa Ritti, Acting PTO Director Talks
Settled Expectations, End of Remote
Work, and More, MLex (Sep. 8,
2025), https://perma.cc/G4LB-T9B3 .................... 12
Order Denying Request for Ex Parte
Reexamination in Reexamination
Control No. 90/015,984........................................... 3
Paul R. Gugliuzza, Our New Old Patent
System, 106 B.U. L. Rev.
(forthcoming 2026)
https://perma.cc/9A88-89SN ................................ 12
William A. Meunier et al., The PTAB
Pendulum Swings: How IPR Denials
Are Reshaping Patent Owner and
Challenger Strategies, Mintz
(Aug. 28, 2025),
https://perma.cc/62K9-VL5X ................................. 6
1
INTEREST OF AMICI CURIAE
Amici are academics who teach and write about
intellectual property law and innovation at
universities throughout the United States.1 Amici
believe that the petition for certiorari in this case
presents significant and unresolved legal issues and
that the perspective of legal scholars will aid the Court
in considering this important question of federal
patent law. Some of the amici recently submitted a
substantially similar brief in support of the cert
petition in Google LLC v. VirtaMove, Corp,, et al., No.
25-1230. Amici have no client or economic interest in
the outcome of this case but have a personal and
professional interest in the proper development of
patent law and policy. A list of amici is attached as
Appendix A.
SUMMARY OF ARGUMENT
The Court should grant certiorari because this
case, like VirtaMove, raises fundamental and
exceptionally important questions of federal patent
law that have not been, but should be, settled by this
Court. Through their application of the “settled
expectations” and summary denial policies, the
Interim Director and Director of the U.S. Patent and
Trademark Office (PTO) have exceeded their statutory
1 Parties’ counsel and counsel for the PTO were given timely
notice of amici’s intent to file this brief pursuant to Rule 37.2. No
counsel for a party authored this brief in whole or in part, and no
party or counsel for a party made a monetary contribution
intended to fund its preparation or submission. No person, other
than amici or their counsel, made a monetary contribution to the
preparation or submission of this brief.
2
authority and are substituting their personal
animosity toward inter partes review (IPR) for the text
of the Patent Act and congressional intent. The result
has been to effectively abolish the IPR process,
disregarding both the statute’s text and this Court’s
decisions.
Congress expressly created the IPR process to
review patent validity. This Court’s review is
necessary to ensure that the PTO does not continue to
act outside its statutory authority and neuter the
statute’s mechanisms for weeding out weak patents.
In its decision below and others before it,
including VirtaMove, the Federal Circuit has
repeatedly declared it has no power to rein in the
Director’s misconduct. As a result, the Director’s
violations of the law will continue—unchecked —
unless this Court steps in.
ARGUMENT
I.
The PTO Has Disregarded the Patent Act to
Invent a New Policy Insulating the Vast
Majority of Patents from Any IPR Review.
In early 2025, interim PTO Director Coke Morgan
Stewart began rejecting meritorious IPR petitions on
the theory that the patent owner had developed
“settled expectations” their patent wouldn’t be
challenged. Kahoot! AS v. Interstellar Inc., 2025 WL
2176613 (U.S.P.T.O. July 31, 2025), Pet. App. 6a. See
also, e.g., iRhythm Techs., Inc. v. Welch Allyn, Inc.,
Nos.
IPR2025-00363,
-00374,
-00376,
-00377 & -00378, 2025 WL 1605274 (P.T.A.B. June 6,
2025). The basis? Simply that the patent was more
than a few years old. Kahoot!, supra, at Pet App. 6a
3
(rejecting IPR because “the challenged patent has
been in force for over six years, creating strong settled
expectations,”). As a result, nearly 70% of all patents—
and an even larger percentage of litigated patents—
are currently insulated from any review at the Patent
Trial and Appeal Board (PTAB).2
During her tenure as Interim Director, Stewart
issued around 300 denials retroactively applying her
newly conjured rules, including 190 involving this
“settled expectations” rationale. Adam Cook, Matthew
Johnson & Daniel Sloan, Discretionary Denial
Statistics,
JD
Supra
(Oct.
16,
2025),
https://perma.cc/7EKX-GJP6. The PTO’s current
Director John Squires, who took office in September
2025, is doing the same. During his tenure, as of May
2026, he had denied 371 out of 498 petitions without
reaching the merits. See Kathi Vidal, PTAB
Discretionary Denial Decisions Since 6/25/2025, at 1
(2026), https://perma.cc/SRT9-JVQY.
To be fair, it is impossible to know exactly how
many of the current Director’s “discretionary denials”
were based on the “settled expectations” policy
because of another troubling fact: The Director has
removed the Patent Trial and Appeal Board (PTAB)
from the review process, usurping decision-making
2 Indeed, the impact goes beyond the PTAB; in at least one case
an IPR on a patent was denied due to “settled expectations,” only
for reexamination to later be denied based on prior proceedings.
See Geotab Inc. v. Fractus, S.A., Nos. IPR2025-00928 & -00929,
2025 Pat. App. LEXIS 5219, at *2 (P.T.A.B. Sep. 12, 2025); Order
Denying Request for Ex Parte Reexamination in Reexamination
Control No. 90/015,984, at 2-3 (“Requester is the same challenger
as in the prior inter partes review . . . . The current Request
includes at least some of the same or substantially the same . . .
arguments previously presented to the Office.”).
4
power for himself. See Dennis Crouch, An Era of No:
The PTO’s New 0% Institution Rate, Patently-O
(Nov. 12, 2025), https://perma.cc/UPD4-D7MM. He
has also stopped providing any reasoning for the vast
majority of his discretionary denials. Id. Nonetheless,
Director Squires has indicated that he considers the
presence of “settled expectations” to be a relevant
factor. In the rare case where he has provided
reasoning, he cites to earlier denials based on “settled
expectations,” including one concluding that “it is not
an appropriate use of resources to review a patent in
which a patent owner has developed settled
expectations.” See Magnolia Med. Techs., Inc. v. Kurin,
Inc., No. IPR2026-00097, 2026 WL 1348926, at *9
(P.T.A.B. May 14, 2026) (quoting Dabico Airport Sols.
Inc. v. AXA Power ApS, No. IPR2025-00408, 2025 WL
1710080 (P.T.A.B. June 18, 2025).
The “settled expectations” policy does not rest on
any proof that the patentee had previously asserted
the patent or engaged in licensing negotiations—or
even that the challenger was aware of the patent. See,
e.g., Dabico, 2025 WL 1710080, at *1. Indeed, the PTO
will apply the policy even if the patentee hasn’t argued
or asked for it. Id. The mere fact a patent is a few years
old means that the PTO is unlikely to permit any
challenge, no matter how strong.
The PTO asserted in this case that six years is
sufficient to “creat[e] strong settled expectations,” Pet.
App. 6, but even that amount of time is not necessary.
Even a patent in force for as little as two years may
have such expectations. Amgen Inc. v. Bristol-Myers
Squibb Co., Nos. IPR2025-00601, -00602 & -00603,
2025 WL 2086050 (P.T.A.B. July 24, 2025) (denying
institution for patents that had been in force for six or
5
more years, and allowing an IPR for a patent that
issued in 2022 while noting that even such a young
patent might have “settled expectations” based on
“investment, time, and resources dedicated to
research, development, trials, and regulatory
approval”). And in fact, in this case, Petitioner filed its
IPR petition less than six years after the patent was
issued, Pet. 6, 12 n.2.
II. The “Settled Expectations” Policy Makes
PTAB Review of Most Patents (and the Most
Important Patents) Impossible.
The vast majority of patents are older than six
years (or younger than nine months3) and thus would
not be subject to IPRs under even the narrowest
reading of the Interim Director’s new policy. See Mark
A. Lemley & Jason Reinecke, Our More-Than-TwentyYear Patent Term, 39 Berkeley Tech. L.J. 681, 682-83
(2024).
That is even more true of the patents for which
IPR is most needed—those purchased and asserted by
patent assertion entities (PAEs), or patent trolls.
Empirical evidence shows that these parties
overwhelmingly bring suit late in the patent’s life—
often in the final three years of a patent’s term. Brian
J. Love, An Empirical Study of Patent Litigation
Timing: Could a Patent Term Reduction Decimate
Trolls Without Harming Innovators?, 161 U. Pa. L.
Rev. 1309, 1312-13 (2013) (explaining that PAEs
“begin asserting their patents relatively late in the
patent term” and that “in the final years of patent
protection, more than 80% of patent assertions are
3 IPR proceedings are barred during the first nine months of a
patent’s term. 35 U.S.C. § 311(c)(1).
6
brought by patent-holding firms that have no
intention of commercializing a product”). Because
those patents have a different owner when they are
asserted than they did when they were issued, there
would be no reason for a challenger to bring an IPR
action against them during the first few years of their
life. But the Director has decided that a patent can lie
dormant for years and still be subject to the new
“settled
expectations”
policy.
See
Taiwan
Semiconductor Mfg. Co. v. Advanced Integrated Cir.
Process, LLC, No. IPR2025-00682, 2025 WL 2369005,
at *1 (P.T.A.B. Aug. 14, 2025).
The practical effect of the new policy has been
dramatic. It has caused not only hundreds of
discretionary denials but also changes to the way the
PTAB itself evaluates cases. For IPR petitions filed
since October 2024, around 72% have been denied,
while IPR petitions filed between January and August
of 2024 enjoyed a 61% institution rate. William A.
Meunier et al., The PTAB Pendulum Swings: How IPR
Denials Are Reshaping Patent Owner and
Challenger Strategies, Mintz (Aug. 28, 2025),
https://perma.cc/62K9-VL5X; see Dani Kass, Squires’
Institution Flips Are Increasing Uncertainty at PTAB,
Law360 (May 26, 2026), https://perma.cc/3TTP-E3BU
(“Squires’ overall institution rate is 25.9%, compared
to a rate that ranged from 58% to 68% each fiscal year
between 2021 and 2024.”).
Not surprisingly, challengers have mostly stopped
filing IPR petitions altogether, recognizing that it is a
fruitless exercise because the Director has no
intention of considering the merits. See Dennis
Crouch, Decimation: Ex Parte Reexamination Eclipses
the
IPR,
Patently-O
(May
2,
2026),
7
https://perma.cc/5ERP-NCAP. Before 2025, the PTAB
received roughly 110 IPR petitions a month, a number
that had held steady for years. By May 2026, that
number dropped to 11. Id.
III. The
“Settled
Expectations”
Policy
Undermines Congress’s Carefully Crafted
IPR System.
The “settled expectations” policy flies in the face
of the IPR regime’s purpose. Congress created the IPR
system to “remedy the[] sorts of problems” that arise
when “bad patents slip through” the PTO. See SAS
Inst., Inc. v. Iancu, 584 U.S. 357, 360 (2018). The PTO,
out of necessity, conducts only a somewhat cursory
review of applications before issuing patents.
Examination is ex parte, and examiners spend only
eighteen hours on average on an application over a
period of three years. See Mark A. Lemley, Rational
Ignorance at the Patent Office, 95 Nw. U. L. Rev. 1495,
1499-1500 (2001). With more than 600,000 patent
applications filed every year, it can’t do more. And we
don’t need it to. Because the validity of most of those
patents doesn’t matter, the benefit of administrative
revocation schemes like IPRs is precisely that they
allow the PTO to concentrate its resources on the
patents that matter—particularly those later asserted
in litigation. Id.; Joseph Farrell & Robert P. Merges,
Incentives to Challenge and Defend Patents: Why
Litigation Won’t Reliably Fix Patent Office Errors and
Why Administrative Patent Review Might Help, 19
Berkeley Tech. L.J. 943, 967-68 (2004).
A patent owner should not have “settled
expectations” that a patent they obtained only a few
years before can never be challenged. The entire
system is set up with the idea that if and when the
8
patentee asserts the patent, its validity can be
evaluated in detail. See SAS, 584 U.S. at 360
(explaining that to remedy the problem of bad patents’
issuance, “Congress has long permitted parties to
challenge the validity of patent claims in federal
court”). And while that remains theoretically possible
in litigation, it is functionally out of reach for many
would-be challengers. See Adam B. Jaffe & Josh
Lerner, Innovation and Its Discontents: How Our
Broken Patent System Is Endangering Innovation and
Progress, and What to Do About It 152 (2004)
(discussing the various disadvantages challengers face
when disputing the validity of a patent through
litigation, including cost, an unfavorable standard of
review, and the barring of certain arguments). Indeed,
the IPR system was designed by Congress to provide a
quicker and cheaper way to engage in that detailed
evaluation. H.R. Rep. No. 112-98, at 48 (2011)
(explaining that IPR was established to provide “quick
and cost effective alternatives to litigation”).
IPR has been a resounding success at that,
delivering results that invalidate patents at a rate
essentially identical to courts,4 but doing so more
4 From the beginning of the IPR system through the beginning of
Squires’ tenure at the PTO, challengers won in whole or in part
5,181 out of 11,511 completed proceedings, or 45.0%. If we
exclude patents that are partially upheld (which is arguably a
patent owner rather than a challenger win) challengers win 4,234
out of 10,564 cases, or 40.1%. Data calculated from
law.lexmachina.com/ptab/ on September 20, 2025. Those
numbers are essentially indistinguishable from the invalidity
rate in court, which is 42.4%. John R. Allison, Mark A. Lemley &
David L. Schwartz, Understanding the Realities of Modern Patent
Litigation, 92 Tex. L. Rev. 1769, 1787 (2014) (finding 42.4%
invalidity rates in cases decided 2009-2013).
9
quickly and at less than 10% of the cost of litigation.
See AIPLA, 2025 Report of the Economic Survey
(2026), https://perma.cc/J66G-EWQZ (comparing the
median $3.62 million cost of litigation to the $350,000
cost of an IPR). The PTO’s new policy nullifies the very
purpose of the IPR regime.
IV. The “Settled Expectations” Policy Cannot Be
Squared with the Statutory Scheme.
The PTO’s new “settled expectations” policy is
wholly inconsistent with the America Invents Act
(AIA). Congress knew how to write time limits into the
IPR system. It did so twice. First, it precluded filing an
IPR in the first nine months after a patent issues. 35
U.S.C. § 311(c)(1).5 Second, it precluded filing an IPR
if the patentee waited “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). Those statutes do not contain any other time
limits, and they do not leave room for the PTO to
create an entirely new time limit of its own—
particularly one that eliminates the overwhelming
majority of petitions the statute permits. Cf. SAS, 584
U.S. at 365 (“[I]f Congress wanted to adopt the
Director’s approach it knew exactly how to do so. . . .
And its choice to try something new must be given
effect rather than disregarded in favor of the comfort
of what came before.”).
The Court’s rationale for rejecting the analogous
doctrine of laches in patent litigation is instructive:
5 Notably, that provision, which requires the petitioner to delay
filing, seems inconsistent with a policy that any delay in filing is
improper.
10
Laches provides a shield against untimely
claims, and statutes of limitations serve a
similar function. When 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. The 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 casespecific judicial determination that occurs
when a laches defense is asserted. . . . As we
stressed in Petrella, “courts are not at liberty
to jettison Congress’ judgment on the
timeliness of suit.”
SCA Hygiene Prods. Aktiebolag v. First Quality Baby
Prods., LLC, 580 U.S. 328, 334-35 (2017). There is no
reason to give the PTO more power than courts,
particularly when, to show settled expectations, none
of the equitable factors that would support laches or
estoppel are even required.
The Federal Circuit has relied on the statutory
provision that makes the PTO’s institution decisions
“final and nonappealable” in refusing to evaluate the
Director’s conduct. Pet. App. 2a; see also, e.g., In re
Cambridge Indus. USA Inc., No. 2026-101, 2025 WL
356129, at *2 (Fed. Cir. Dec. 9, 2025) (quoting 35
U.S.C. § 314(d)). But Congress did not have in mind
the risk that a PTO director would go rogue—like the
recent Director and Interim Director have done—and
decide to wholly ignore the statutory scheme.
In refusing to even consider the vast majority of
IPR petitions, the PTO is not legitimately exercising
11
the case-by-case discretion the statute grants to the
Director. 35 U.S.C. § 314(a). Rather, it is effectively
abolishing the IPR process. This is not the exercise of
the Director’s statutory discretion to consider the
merits of each case. It is instead the calculated
decision not to consider the merits. Cf. Martin v.
Franklin Cap. Corp., 546 U.S. 132, 139 (2005)
(“Discretion is not whim, and limiting discretion
according to legal standards helps promote the basic
principle of justice that like cases should be decided
alike.”). By displacing congressionally enacted policies
with its own preferences, the PTO has made IPR
outright inaccessible in a substantial majority of
cases.
This Court has kept a safety valve in place for
precisely this kind of dereliction of duty. See SAS, 584
U.S. at 371 (allowing judicial review of institution
decisions under the Administrative Procedure Act and
to challenge “shenanigans”); Cuozzo Speed Techs.,
LLC v. Lee, 579 U.S. 261, 275 (2016).
The PTO’s current policy does not reflect a caseby-case exercise of discretion on the facts of each case.
Rather, it reveals the Office’s opposition to the very
idea of IPRs. Then-Interim Director Stewart said
in a speech to the Intellectual Property Owners
Association:
Imagine if your law license, your business
license, your college degree, the title to your
home or your ability to drive were constantly
subjected to reconsideration by anyone at any
time, year after year after year. And that you
had no presumption that the original decision
was correct, and no window of time that closes
to stop these challenges. It’s hard to think of a
12
single example in all of government where
such a system exists. And such a system is
completely contrary to the exclusive right
granted to patent owners in the Constitution,
the presumption of validity granted by
Congress and the Article III court protections
afforded to patent owners prior to the AIA . . . .
To have a stable economy we need a stable
patent system. Repeated and expedited
reconsideration of patent grants under the low
preponderance of evidence standard is the
antithesis of stability.
Melissa Ritti, Acting PTO Director Talks Settled
Expectations, End of Remote Work, and More, MLex
(Sep. 8, 2025), https://perma.cc/G4LB-T9B3 (emphasis
added). That statement reflects a flat-out rejection of
the entire policy of IPRs as established by Congress in
the America Invents Act.
Director Squires has continued—and indeed
amplified—that hostility toward the statutory scheme.
See generally Paul R. Gugliuzza, Our New Old Patent
System, 106 B.U. L. Rev. (forthcoming 2026)
(manuscript at 4), https://perma.cc/9A88-89SN (noting
that Director Squires “seems eager to undermine, if
not dismantle, the PTO’s post-issuance review
proceedings” and that this “threaten[s] to recreate a
version of the patent system Congress [has]
deliberately sought to reform”). He has testified that
he believes “IPR is not the only game in town” and that
he “prefer[s] a more laid open model where you take
your shot, take it now, and take it once and for all.”
House Judiciary GOP, Oversight of the U.S. Patent
and Trademark Office, at 1:45:15 (YouTube, Mar. 25,
2026), https://perma.cc/9R9F-86HC (to locate, select
13
“View the live page”). In Magnolia Medical
Technologies, Squires advanced his view that the
purpose of IPRs is “to provide a quick and costeffective alternative to district court patent litigation,”
and explained that his approach was motivated by a
belief that “many petitioners seek AIA review in
parallel with litigation to gain litigation advantage.”
2026 WL 1348926, at *1 (emphasis in original).
That hostility is not reflected only in the “settled
expectations” cases. The Director also has proposed a
rule change that would refuse IPR petitions unless the
challenger agreed to waive its validity challenges in
litigation—even challenges it couldn’t bring in an IPR.
Jason Engel & Erik Halverson, USPTO Proposes Rule
Changes to Refocus Inter Partes Review Proceedings,
K&L Gates IP Law Watch (Oct. 17, 2025),
https://perma.cc/T8B4-FXXL. That proposed rule is
flatly inconsistent with the statute, 35 U.S.C. § 315(e),
which sets out a much narrower scope of
impermissible overlap, and with the cases interpreting
that statute, see, e.g., Ingenico Inc. v. IoEngine, LLC,
136 F.4th 1354, 1365-66 (Fed. Cir. 2025).
Further, Director Squires has refused to institute
meritorious petitions—ones that the PTAB judges and
even his own deputy found worthy of review—because
while some claims were likely invalid, other claims in
the patent might not be. See, e.g., Zhuhai CosMX
Battery Co. v. Ningde Amperex Tech. Ltd.,
No. IPR2025-00405, 2025 WL 2939499 (P.T.A.B. Oct.
15, 2025). That, too, directly contradicts the statute,
which provides for review if at least one of the claims
of the patent is likely invalid. 35 U.S.C. § 314(a). It
also undermines this Court’s reading of the statute,
which “suggests . . . a regime where a reasonable
14
prospect of success on a single claim justifies review of
them all.” SAS, 584 U.S. at 358. And the Director has
done all this retroactively, not by proposing rules but
instead by applying these new fiat doctrines to
petitions filed before he even took office—petitions
filed under very different rules. See Mark A. Lemley,
Patent Law’s (Short-Lived?) Era of Normalcy, 103
Wash. U. L. Rev. 1619, 1640-41 (2026).
The evidence is clear: The Director doesn’t think
we should have an IPR system, at least not one that
allows defendants in patent lawsuits to opt for a
quicker and cheaper resolution at the PTO. But
Congress clearly contemplated such a parallel system
and built a statute of limitations and estoppel rules
precisely to govern the coordination of litigation and
IPR proceedings. See 35 U.S.C. § 311(c)(1) (permitting
proceedings to be filed “later [than] 9 months after the
grant of a patent”); id. § 315 (titled “Relation to other
proceedings or actions”); id. § 315(b) (providing that
IPRs may be filed by a defendant in litigation within
one year after the suit is filed); id. § 315(e) (providing
for limited estoppel in court based on IPR findings in
co-pending litigation). Thus, not only are the Director’s
motivations misguided, but they also cannot be
squared with the system Congress created. See
Christian Helmers & Brian J. Love, Patent Validity
and Litigation: Evidence from U.S. Inter Partes
Review, 66 J.L. & Econ. 53, 78 (2023) (“While the
availability of both litigation and the IPR process has
been attacked . . . as inefficient and opportunistic, our
results confirm that IPRs can have a complementary
effect on litigation, as Congress hoped at the time of
the IPR system’s creation.”).
15
This Court has carefully considered the legality,
scope, and limits of that IPR system in no fewer than
six cases over the past decade. See Cuozzo, 579 U.S. at
261; Oil States Energy Servs., LLC v. Greene’s Energy
Grp., LLC, 584 U.S. 325 (2018); SAS, 584 U.S. at 357;
Return Mail, Inc. v. U.S. Postal Serv., 587 U.S. 618
(2019); Thryv, Inc. v. Click-to-Call Techs., LP, 590 U.S.
45, 53 (2020); United States v. Arthrex, Inc., 594 U.S.
1, 8 (2021). It presumably did so because it thought the
congressional scheme mattered, not simply to issue
advisory opinions the Director was free to disregard.
The Director may well believe IPRs are a bad idea.
It is fine for someone—even someone in a position of
authority—to disagree with Congress’s judgment and
wish the law had been written differently. It is not fine
for them to seek to supplant congressional mandate by
adopting their own policy, as the Interim Director and
Director have done. This is “shenanigans” indeed.
SAS, 584 U.S. at 371.
V. This Issue Is Important and Recurring, and
Certiorari Is the Only Way to Ensure That
the PTO Follows the Law.
The PTO’s disregard for the Patent Act and
Congress’s intent in enacting the AIA raises
exceptionally important questions of federal law that
should be settled by this Court. The PTO has issued
hundreds of discretionary denials pursuant to an
illegal policy. The Court of Appeals for the Federal
Circuit has refused to review the PTO’s actions,
deciding in this and over a dozen other cases that these
decisions are “final and nonappealable.” See, e.g., In re
Kahoot! AS, 2026-119, 2026 WL 519635, at *1 (Fed.
Cir. Feb. 25, 2026), Pet. App. 2a; In re Cambridge
Indus. USA Inc., No. 2026-101, 2025 WL 356129, at *2
16
(Fed. Cir. Dec. 9, 2025) (cleaned up); In re Sandisk
Techs., Inc., No. 2025-152, 2025 WL 3526507, at *1
(Fed. Cir. Dec. 9, 2025). This has created a circuit split
with the D.C. Circuit, which has held that federal
courts have jurisdiction to review agency positions
that are not “single-shot” decisions, but rather
represent statements of a “general enforcement policy,”
even if the statute precludes review of individual
agency decisions. See OSG Bulk Ships, Inc v. United
States, 132 F.3d 808, 812 (D.C. Cir. 1998) (cleaned up).
The PTO’s actions and the Federal Circuit’s
refusal to rein it in reach “well beyond [any individual]
decision to institute inter partes review,” Thryv, 590
U.S. at 53—they implicate whether the statute
Congress created to review and help weed out “bad
patents” continues to functionally exist at all.
Certiorari is the only available mechanism to resolve
this question.
17
CONCLUSION
The petition for a writ of certiorari should be
granted.
Respectfully submitted,
Phillip R. Malone
Counsel of Record
Nina K. Srejovic
JUELSGAARD
INTELLECTUAL
PROPERTY AND
INNOVATION CLINIC
MILLS LEGAL CLINIC AT
STANFORD LAW SCHOOL
559 Nathan Abbott Way
Stanford, CA 94305
(650) 725-6369
pmalone@stanford.edu
September 16, 2026
A-1
APPENDIX TABLE OF CONTENTS
Page
List of Amici Curiae ……………………………. A-1
A-1
APPENDIX A—LIST OF AMICI CURIAE
University affiliations provided for identification
purposes only
Professor Jonas Anderson
University of Utah S.J. Quinney College of Law
Professor Clark D. Asay
Brigham Young University J. Reuben Clark Law
School
Professor Derek Bambauer
University of Florida Levin College of Law
Professor Jeremy W. Bock
Tulane University Law School
Professor Michael A. Carrier
Rutgers Law School
Professor Michael W. Carroll
American University Washington College of Law
Professor Zachary L. Catanzaro
Widener University Delaware Law School
Professor Bernard Chao
University of Denver Sturm College of Law
Professor Jorge L. Contreras
University of Utah S.J. Quinney College of Law
Professor Christopher A. Cotropia
George Washington University Law School
A-2
Professor Nikola L. Datzov
University of North Dakota School of Law
Professor Emerita Rochelle Dreyfuss
NYU School of Law
Professor Charles Duan
American University Washington College of Law
Professor Samuel F. Ernst
Western State College of Law
Professor Stefania Fusco
Oklahoma State University
Professor Shubha Ghosh
Syracuse University College of Law
Professor Tim Holbrook
University of Denver Sturm College of Law
Professor Mark D. Janis
Indiana University Maurer School of Law
Professor Sapna Kumar
University of Minnesota Law School
Professor Amy Landers
Drexel University Thomas R. Kline School of Law
Professor Christa Laser
Cleveland State University College of Law
Professor Jack I. Lerner
UC Irvine School of Law
A-3
Professor David S. Levine
Elon University School of Law
Professor Doug Lichtman
UCLA School of Law
Professor Yvette Joy Liebesman
Saint Louis University School of Law
Professor Orly Lobel
University of San Diego School of Law
Professor Brian J. Love
Santa Clara University School of Law
Professor Mark A. Lemley
Stanford Law School
Professor Christopher J. Morten
NYU School of Law
Professor Jef Pearlman
Boston University School of Law
Professor Stephanie Plamondon
Brigham Young University J. Reuben Clark Law
School
Professor Arti K. Rai
Duke University School of Law
Professor Christopher B. Seaman
Washington and Lee University School of Law
Professor Michael S. Sinha
Saint Louis University School of Law
A-4
Professor David Stein
Vanderbilt Law School
Professor Jennifer E. Sturiale
Widener University Delaware School of Law
Professor S. Sean Tu
University of Alabama School of Law
Professor Liza Vertinsky
University of Maryland Francis King Carey School of
Law
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.