Overview
Last week, Google filed a petition for certiorari with the U.S. Supreme Court challenging a recent policy shift at the U.S. Patent and Trademark Office (PTO) and raising implications for judicial review standards. The dispute centers on the PTO’s new practice of denying inter partes review (IPR) for patents more than six years old, claiming the patent obtains “settled expectations” regarding its validity after six years. Google argues that this policy effectively creates a “statute of limitations” that Congress never authorized, shielding potentially invalid patents from administrative scrutiny simply because of their age.
The petition makes two main legal arguments. First, Google contends that the PTO lacks the statutory authority to deny review based on a patent owner’s “settled expectations.” According to the petition, the Patent Act, codified primarily in Title 35 of the U.S. Code, explicitly states that patents are granted subject to the condition that they may be canceled if they are found to be invalid at any point during their term. Google asserts that by creating an age-based immunity, the PTO is protecting so-called “bad patents” that it argues are often asserted by non-practicing entities, which stifles innovation and directly contradicts the goals of the America Invents Act.
Second, Google challenges the Federal Circuit’s ruling that the federal courts cannot review PTO decisions denying IPRs. Google argues this position is a “stark departure” from fundamental administrative law principles, particularly the duty of federal courts to define the boundaries of agency discretion. The petition references the Supreme Court’s recent decision in Loper Bright Enterprises v. Raimondo, emphasizing that agencies do not have the power to exceed the limits placed on them by Congress, and courts must be able to police those boundaries.
Ultimately, Google maintains that this case is a critical vehicle for addressing issues of exceptional importance to the patent system and administrative law. The petition warns that if the PTO’s authority remains unchecked, the agency could eventually eliminate IPRs altogether or categorically exclude certain petitioners. By granting certiorari, Google argues the Supreme Court can reaffirm that the judiciary remains the final arbiter of the scope of an agency’s authority and ensure that invalid patents do not continue to impose significant real-world costs.
