SCOTUS Heeds SG's Call to Deny Google's Challenge of PTAB Settled Expectations Doctrine

On Monday, October 19, 2026, the U.S. Supreme Court issued an order list that included a denial of Google's petition for a writ of certiorari in Google LLC v. VirtaMove, Corp., challenging the U.S. Patent and Trademark Office's development of the settled expectations doctrine at the Patent Trial and Appeal Board (PTAB). Under that doctrine, the length of time a patent has been in force can weigh in favor of discretionarily denying inter partes review (IPR). The denial came a few weeks after the U.S. Solicitor General urged the Court to reject the petition, agreeing with the Federal Circuit that such a challenge was not available on mandamus review.

The dispute traces back to January, when the Federal Circuit denied Google's petition for mandamus relief after the PTAB denied institution of IPR proceedings challenging VirtaMove's patent claims in part because those claims had been in force for 14 years, creating settled expectations in the patent rights. Google filed its cert petition in April, supported by amici from the computer and automotive industries, while independent inventor interests criticized the petition.

In its July 13 brief in opposition, VirtaMove argued that Google was using mandamus to evade 35 U.S.C. Section 314(d), which bars appeals of IPR institution decisions, and that Google failed the Cheney standard for mandamus because it has adequate alternative relief through infringement litigation or an APA action in district court. The Solicitor General acknowledged that Section 314(d)'s nonappealable language does not entirely foreclose mandamus relief, but argued it was inappropriate here, citing Cuozzo Speed Technologies v. Lee (2016) and U.S. v. Arthrex (2021) as confirming the agency's unreviewable discretion. Google's approach, the SG warned, taken to its logical conclusion would fundamentally transform the legal regime governing the Director's discretionary institution decisions. In its September 29 reply, Google countered that Congress's choice not to enact a time bar for IPRs reflected a policy that patents should remain subject to administrative cancellation throughout their term.

The denial leaves the settled expectations doctrine in force and narrows the tech sector's judicial options; related challenges remain pending, including cert petitions by Google and Intel from a February Federal Circuit ruling upholding denials based on parallel district court litigation. Reuters has reported that the PTAB instituted only about 37 percent of petitions in 2026, down from 65 percent under previous leadership. With the courts deferring to agency discretion, attention is expected to shift to Congress, where industry groups are pressing for legislation that would define and limit PTAB institution criteria.

Original Link: https://ipwatchdog.com/2026/10/20/scotus-heeds-sgs-call-deny-googles-challenge-ptab-settled-expectations-doctrine/