On April 27, 2026, Google filed a petition for a writ of certiorari with the U.S. Supreme Court in the case of Google LLC v. VirtaMove Corp., challenging the U.S. Patent and Trademark Office’s (USPTO) practice of denying inter partes review (IPR) petitions based on the “settled expectations” doctrine. This doctrine allows the Patent Trial and Appeal Board (PTAB) to decline IPR petitions for patents that have been in force for an extended period without prior validity challenges, thereby creating a presumption of validity.
The “settled expectations” policy was formalized in a March 26, 2025, memorandum from the USPTO, which stated that the longer a patent has been in force, the more settled the expectations regarding its validity should be. This approach aligns with other legal frameworks, such as the six-year statute of limitations for recovering infringement damages under 35 U.S.C. § 286. In practice, the PTAB has applied this doctrine to deny IPR petitions for patents that have been in force for six years or more, even in the absence of prior challenges.
In the VirtaMove case, Google’s IPR petition was denied on the grounds that the challenged patent had been in force for over 14 years, creating strong settled expectations. Google contends that this application of the “settled expectations” doctrine exceeds the USPTO’s statutory authority and undermines the purpose of IPR proceedings, which is to provide a mechanism for challenging potentially invalid patents at any point during their term.
The Federal Circuit denied Google’s petition for a writ of mandamus on January 27, 2026, upholding the PTAB’s decision to deny institution based on settled expectations. In response, Google has now sought Supreme Court review, presenting two key questions: whether the USPTO lacks statutory authority to deny institution based on settled expectations, and whether courts have the power to review such PTO decisions that are contrary to statute.
This case has garnered significant attention from various industry groups and legal scholars. Amicus briefs have been submitted by organizations such as the High Tech Inventors Alliance, the Computer & Communications Industry Association, and the Software & Information Industry Association, all urging the Supreme Court to address the potential overreach of the USPTO’s discretionary denial practices.
The outcome of this case could have profound implications for patent litigation strategy, particularly concerning the timing of IPR petitions. Accused infringers may need to reassess their approaches to challenging older patents, considering the potential for discretionary denials based on the age of the patent and the absence of prior challenges. Legal professionals should closely monitor developments in this case to inform their IPR tactics and ensure they align with the evolving landscape of patent validity challenges.