Recently, a coalition of computer and automotive industry trade organizations, representing the vast majority of primary petitioners filing inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB), submitted an amicus curiae brief to the Supreme Court of the United States, imploring the Supreme Court to grant Google’s petition for a writ of certiorari. The petition ultimately aims to challenge the PTAB's "settled expectation" doctrine developed during the administration of the current United States Patent and Trademark Office (USPTO). This amicus brief reiterates several assertions from Google's certiorari petition regarding the statutory authority of the USPTO, pointing out that such authority would undermine the improvements in patent certainty achieved under Director Squires' tenure thus far—as noted by independent inventors facing PTAB challenges similar to those of VirtaMove, a developer of server migration solutions.

Denials Based on Discretionary Factors Are "Dismantling" the Patent Review System

Google's petition for certiorari stems from a two-page ruling issued by the Federal Circuit in January 2026. The ruling denied Google's request for mandamus relief against the PTAB's anticipated denial of its IPR petition, which challenged the validity of VirtaMove’s U.S. Patent No. 7,519,814 (application suite containerization system). Google’s review petition was denied by the Federal Circuit, partly on the grounds that VirtaMove possessed a settled expectation in patent rights that had been in effect for 14 years. The core rationale for the Federal Circuit's denial of Google's mandamus petition was that Google failed to demonstrate its entitlement to relief under the precedent of the 2019 case Celgene Corp. v. Peter (hereinafter: the Celgene case). That precedent clarified that IPR proceedings established by the America Invents Act (AIA) do not constitute an unconstitutional taking of property, even if they invalidate patent rights granted prior to the enactment of the Act. Although the Celgene case did not involve the boundaries of authority regarding discretionary denials of institution, the Federal Circuit cited the precedent and stated that it had previously denied multiple other petitions for mandamus relief targeting the PTAB's "settled expectation" doctrine.

In April 2026, Google formally filed its petition for a writ of certiorari, presenting two questions presented for review to the Supreme Court: whether the USPTO lacks statutory authority to deny validity challenges based on the settled expectations of a patent, given that relevant patent statutes permit administrative review of patent validity during its term; and whether the federal judiciary has the authority to review decisions by the USPTO to deny IPR petitions on grounds that violate the statutes.

The recently filed amicus brief supporting Google's petition lists former USPTO Acting Director Joseph Matal as the counsel of record. The brief points out that the USPTO's "settled expectation" doctrine is an infraction that goes far beyond exceeding the agency's authorizing statutes. The brief also states that while there is no intention to overstate the damage caused to the AIA patent review system by USPTO management over the past year, the practical effect is that if a patent has been in effect for six years or more, its validity cannot be challenged through the PTAB's IPR proceedings. According to the brief, 201 IPR denials have already been issued based on the "settled expectation" doctrine, and another 302 denials of IPR and post-grant review (PGR) have been issued based on administrative agency discretion, actions which are "dismantling the patent validity review system established by Congressional legislation."

The amicus brief further points out that the USPTO has modified the rules regarding the deadline for a party to file an IPR petition after being designated as a defendant in a patent infringement lawsuit in a U.S. district court. 35 U.S.C. § 315(b) explicitly mandates a one-year deadline for filing IPR petitions, but the USPTO, in district courts with parallel infringement litigation, references the court's time-to-trial statistics as the basis for determining discretionary denials of IPR petitions, even if the petitioner strictly complied with the statutory time limit.

The trade organization's brief further calculates that since the USPTO formally promulgated this new time limit in March 2025, 280 IPR and PGR petitions have been denied due to this entirely new time limit rule. This new rule substantially benefits patent owners who file lawsuits in the Eastern District of Texas, where the average trial cycle for court cases is approximately 22 months; under the USPTO's new time limit rule, infringement defendants are left with only 4 months to file applications contesting patent validity. Furthermore, the overlapping application of several extra-statutory rules, such as third-party estoppel and assignor estoppel, has further exacerbated petition denials. Since the implementation of the new time limit rule, a total of 770 IPR or PGR petitions have been denied based on various discretionary grounds.

The Timing of Challenging PTAB Precedential Decisions Sparks Major Controversy

In a May 2026 column published in the media outlet IPWatchdog, independent inventor Molly Metz and renowned intellectual property strategist Erich Spangenberg pointed out that while Google's assertions against the "settled expectation" doctrine possess a degree of reasonableness, the timing of this challenge by Google and similar companies has sparked considerable controversy. The PTAB's adjudication mechanism has consistently been shaped through PTAB cases of jurisprudential significance designated as precedential by the agency, such as Sotera or Fintiv. Now, this very "settled expectation" rule, which brought patent ownership certainty to independent inventors like Metz and could have helped them improve business development, has become the target of Google's review petition. Metz questioned whether the trade organizations supporting Google's position truly aim to promote the overall benign optimization of the U.S. patent system.

The trade organizations submitting the brief this time include the Computer & Communications Industry Association (CCIA), the High Tech Inventors Alliance (HTIA), and United for Patent Reform (USMADE). Google is a publicly listed member of both CCIA and HTIA, and the membership rosters of both associations encompass a collection of the most active IPR petitioners before the PTAB: Samsung, Apple, Microsoft, Intel, Micron, Cisco, and Comcast all rank among the top ten in terms of IPR petition volume, and all are members of one or both of the aforementioned associations. Other supporting parties to this brief include the Alliance for Automotive Innovation, whose membership includes Ford Motor Company, the domestic automaker with the highest volume of IPR petitions. Ford, along with several member companies of CCIA and HTIA, is also a member of USMADE, which also absorbs other top IPR petitioning enterprises not explicitly listed.

On the same day the CCIA/HTIA brief was submitted, the PTAB Bar Association also filed an amicus curiae brief, entreating the Supreme Court to grant Google’s petition for a writ of certiorari. The association represents attorneys from both sides participating in IPR cases, and its assertions fundamentally align with the perspectives of the automotive and computer industry organizations. In addition, the association supplemented that the USPTO's unauthorized exercise of federal legislative authority to create additional grounds for discretionary review constitutes a constitutional issue. The administrative agency's invocation of 35 U.S.C. § 314(a) to issue discretionary denial rulings actually misinterprets the clause as a legislative authorization, whereas the essence of the clause is to limit the Director's authority, clarifying that the Director may deny a review petition only when the IPR petition lacks a valid basis for a validity objection.