Amicus Curiae Brief — Intel Corporation, et al., Petitioners v. John A. Squires, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office, et al.
Supreme Court briefAug 17, 2026
Ask Donna
What actually matters in this document.
Text
No. 26-73
In the Supreme Court of the United States
─────────────♦─────────────
INTEL CORPORATION, GOOGLE LLC,
Petitioners,
v.
JOHN A. SQUIRES, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY AND
DIRECTOR OF THE UNITED STATES PATENT AND
TRADEMARK OFFICE,
Respondent.
____________________________
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, THE HIGH TECH INVENTORS ALLIANCE, THE COMPUTER & COMMUNICATIONS INDUSTRY ASSOCIATION, ASSOCIATION FOR COMPETITIVE TECHNOLOGY
(ACT), THE SOFTWARE & INFORMATION INDUSTRY ASSOCIATION, AND NATIONAL RETAIL FEDERATION AS AMICI CURIAE IN SUPPORT OF PETITIONERS
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 17, 2026
LEGAL PRINTERS LLC ! Washington, DC ! 202-747-2400 ! legalprinters.com
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 supplement the
statutory time limit with its own rules that reduce the
amount of time that is available to file a petition for
review.
i
TABLE OF CONTENTS
TABLE OF AUTHORITIES ................................. IV
INTEREST OF AMICI CURIAE ........................... 1
SUMMARY OF ARGUMENT ................................. 3
ARGUMENT ............................................................. 6
I.
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
A.
The Federal Circuit’s interpretation
would wreak havoc with other federal
statutes. ...................................................... 25
ii
B.
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
iv
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
v
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
LEGISLATIVE MATERIALS
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
vi
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, 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, 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.
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
Intel and Google are members of several amici, they did not participate in the decision to file this brief.
1
The Software & Information Industry Association
is the principal trade association for the software and
digital information industries, serving those in the
business of information.
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 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 “reasonable 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 is
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. An 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.
3
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—
4
with limited safety valves—it cannot plausibly be understood to have intended that the statute would be
merely optional for the agency to follow.
5
ARGUMENT
I.
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
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
3 See S.23, America Invents Act, 112th Congress (2011), § 5 (pro-
posed 35 U.S.C. § 315(b)).
6
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 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
at
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.
7
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 petition is filed. 9 The
USPTO has concluded, however, that the average
time to trial in the Eastern District of Texas is about
22 months 10—which means that once a defendant is
sued there, it has less than four months to prepare
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).
8
and file a petition under the USPTO’s new time-totrial 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
25 inter partes review petitions. Notably, the USPTO
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/patent-dispute-report-q32025-in-review.
12 See USITC, Section 337 Statistics: Average Length of Investi-
gations
(updated
Feb.
3,
2026),
available
at
https://www.usitc.gov/intellectual_property/337_statistics_average_length_investigations.htm.
See USITC, Section 337 Statistics: Number of New, Completed, and Active Investigations By Fiscal Year (updated Feb.
3, 2026), available at https://www.usitc.gov/intellectual_property/337_statistics_number_new_completed_and_active.htm.
13
9
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 timeto-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-discretionary considerations, the
Director will issue a summary notice denying institution.” 16
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).
15 Ryan Davis, Stewart Says New Policies Seek Fairness for Pa-
tent Owners, Law360, Sep. 15, 2025.
16 Director Institution of AIA Trial Proceedings, October 17,
2025, available at https://perma.cc/DQ5J-X5G4.
10
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:
11
12
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 its 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
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 pa-
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).
13
tents that have been challenged in an inter partes 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 adopted and applied several
other extra-statutory rules to bar petitions for AIA review. 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
19 See DeFosse, J., Data Undermines USPTO’s “Settled Expecta-
tions” Doctrine, Law360, Aug. 29, 2025.
20 See id.
See Appendix at 1-6, available at https://perma.cc/87GYNLXK.
21
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.
14
By amici’s count, since March 28, 2025, the
USPTO has denied 801 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. 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 merits. 26
But since October 2025, the petition institution rate
has plummeted to 25%. 27 Unsurprisingly, “[t]he number of America Invents Act petitions [filed has] con-
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.
26
27 See Theresa Schliep, Squires Snubs 10 IPRs While 4 Pass Muster In Latest Order, Law360, April 29, 2026.
15
tinued to crater . . . as [these] 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 enacted
28 Theresa Schliep, PTAB Petitions Continue To Plummet As
Reexams Surge, Law360, April 17, 2026.
29 Dennis Crouch, Borrowing from the Board: District Court Obviousness in the Post-IPR Era, May 21, 2026, available at
https://perma.cc/UAC8-CNGX.
See Dennis Crouch, Inter Partes Review in 2026, May 24,
2026, available at https://perma.cc/QE34-RUTC.
30
31 Crouch, supra n.30.
16
system of patent validity review has been “functionally suspended.” 32
32 Id.
17
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 “supplemented” 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.
18
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 is 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
19
made ‘speed to judgment’ its overriding objective in
designing these proceedings—it must have known
that when the threshold invalidity showing for instituting review is met, 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.
20
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 Investment Group,
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.
33
34 See generally supra n.5.
21
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 Of-
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).
22
fice policies remain unchecked, they will lead to a systematic looting of the American industrial economy.” 37
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”); Parke-Davis &
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,
23
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—post-issuance review at the USPTO. 40 The 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-To-Call Techs., LP, 590 U.S. 45, 54
(2020).
ever, ever, ever, ever offer an obviousness argument to a jury,”
as the jury will not understand it.) (quoted in Dani Kass, What
Judges Want You to Know: Litigate Smarter, Law360, Feb. 11,
2025).
40 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.”).
24
IV.
The statutory framework for patent-validity 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.
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
25
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
41 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 ap-
plies 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”).
43 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”).
26
signals, 44 operating an insured State bank, 45 originating loans, 46 or selling motor vehicles. 47 The same
statutory formulation also governs whether healthcare 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.
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”).
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”).
27
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 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 bankruptcy 54—all because Congress gave an
49 28 U.S.C. § 2253(c)(2).
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”).
28
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
claim 55 and the USPTO would never be required to
allow a patent applicant to claim priority to its provisional application 56 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”).
55
56 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”).
29
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. 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).
30
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).
31
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 17, 2026
32
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.