IP Law Daily, VITAL BRIEFING—Google asks Supreme Court to decide legitimacy of ‘settled expectations rule’ in patent reviews, (May 14, 2026)
Vital Briefing article describes recent developments in the fight over a controversial USPTO policy to deny institution of inter partes review of patents that have been in force for six or more years.
Google LLC is taking its challenge of the USPTO’s recently adopted “settled expectations rule” to the Supreme Court. Under the controversial policy, put in place last year, the agency has declined to institute inter partes review (IPR) of patents of an indeterminate age—typically six years or more, but sometimes fewer—on the ground that patentees have developed settled expectations as to their validity. Rebuffed IPR petitioners—including Google—who argue that the rule is contrary to statute and constitutionally deficient have failed in their attempts to obtain mandamus relief from the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit has repeatedly held that the extraordinary remedy of a writ of mandamus was not appropriate for these challenges. The Federal Circuit also has consistently held that the America Invents Act made institution or non-institution decisions by the USPTO Director nonappealable in court.
Google asserts that the USPTO exceeded its statutory authority by adopting the settled expectations policy, and it argues that Article III of the Constitution gives courts the power to review denials of institution of review that are contrary to statute. The tech giant calls the settled expectations rule “a stark departure from the Patent Act and decades of administrative practice.” According to Google, the Federal Circuit’s interpretation of the IPR statute has allowed the USPTO to “sharply reduce administrative review of patent validity on grounds that are directly contrary to Congress’s statutory design.”
If the Supreme Court takes up Google’s petition for certiorari, its decision could have implications regarding administrative agency authority in areas beyond the IP realm. Some Justices have expressed concern that insulating the Director from appeals could weaken safeguards against arbitrary government, suggesting that granting certiorari could have support.
A Vital Briefing article titled “Google takes challenge of USPTO’s controversial ‘settled expectations rule’ to Supreme Court” looks at the controversy over the rule and examines Google’s contentions as to its impropriety. The article is available here.
MainStory: Patent USPTO