Supreme Court Rejects Google Challenge to PTAB Settled Expectations
The justices decline to review patent review denials grounded in how long claims have been in force.
By Giovanni Sapere
2 min readHuman-Edited, AI-Assisted
The U.S. Supreme Court has declined to hear a petition by Google challenging the Patent Trial and Appeal Board's use of patent longevity in discretionary review denials. The decision leaves intact the administrative doctrine that protects long-held patent rights from inter partes review challenges.
The Battle Over Patent Longevity at the PTAB
On an October order list, the U.S. Supreme Court denied a petition for a writ of certiorari filed by Google, as reported by IPWatchdog. The dispute centers on the settled expectations doctrine developed by the Patent Trial and Appeal Board within the U.S. Patent and Trademark Office. Under this administrative practice, administrative patent judges can exercise discretion to deny petitions for inter partes review, known as IPR, when challenged patent claims have remained valid and in force for an extended term, creating justifiable reliance for the patent holder.
“[Google’s] approach, taken to its logical conclusion, would fundamentally transform the legal regime that governs the Director’s discretionary institution decisions.”
— U.S. Solicitor General
From VirtaMove's Fourteen-Year-Old Rights to Mandamus Review
The legal conflict originated when Google sought an IPR against claims held by patent owner VirtaMove, according to IPWatchdog. The PTAB rejected institution partly because the intellectual property had been in force for 14 years, establishing settled rights. In January, the U.S. Court of Appeals for the Federal Circuit dismissed Google's request for mandamus relief. Google subsequently filed its Supreme Court petition in April, backed by amicus briefs from automotive and computer industry groups, while independent inventor groups voiced opposition.
Statutory Authority and Discretionary Institution
In opposition filings, VirtaMove noted that under 35 U.S.C. § 314(d), board decisions regarding whether to institute review remain unappealable, reported IPWatchdog. The patent owner emphasized that the rate of discretionary denials for patents active for six years differs by only 4 percentage points from baseline discretionary denial rates. Backing the denial of certiorari, the U.S. Solicitor General cited precedent in Cuozzo Speed Technologies v. Lee and U.S. v. Arthrex, asserting that the director retains broad administrative discretion without a statutory mandate compelling institution.
Implications for Patent Holders and Review Strategy
In its reply brief submitted on September 29, Google contended that the America Invents Act contains no time limitation barring administrative cancellation across a patent's life span, according to IPWatchdog. With the high court's refusal to intervene, the USPTO retains authority to factor claim age into its procedural decisions, maintaining stability for businesses relying on mature innovation portfolios against late-stage administrative challenges.
