Google Challenges Patent Reexamination "Settled Expectation" Rule in Appeal to U.S. Supreme Court

According to reports, Google has recently filed a petition for a writ of certiorari with the U.S. Supreme Court, challenging a rule known as the "settled expectation" rule that the U.S. Patent and Trademark Office (USPTO) has been implementing in recent years. This litigation is not merely a challenge to a specific policy, but also concerns the boundaries of federal agency authority and the future direction of the U.S. patent challenge system.

The "settled expectation" rule originated from a series of USPTO decisions around 2025. The rule allows the USPTO to use the fact that a patent has been in force for many years as a significant discretionary basis for denying institution of inter partes review (IPR) proceedings. In practice, USPTO Director John Squires set the "watershed" for this rule at patent effectiveness exceeding six years. This means that once a patent has survived for six years without being successfully challenged, the USPTO may determine that a "settled expectation" in its validity has been formed by interested parties, and thereby deny a subsequent IPR petition. Proponents argue that the rule protects the stable commercial expectations associated with patents that have long remained unchallenged.

This lawsuit began with Google's IPR challenge against a software patent owned by VirtaMove that had been granted for 14 years. In January 2025, Google filed an IPR petition challenging a VirtaMove patent, but that move instead enabled VirtaMove to obtain a $625 million verdict against Google in a related patent infringement lawsuit. The USPTO denied Google's petition outright, simply on the ground that the patent had been in force for 14 years, creating a strong settled expectation.

Google subsequently filed an internal appeal, requesting reconsideration by the Patent Trial and Appeal Board (PTAB), but was denied. Thereafter, Google sought a writ of mandamus from the U.S. Court of Appeals for the Federal Circuit (CAFC). In January 2026, the CAFC denied Google's petition, reaffirming that the USPTO Director has broad discretion over whether to institute IPR proceedings and that the courts lack jurisdiction to review such decisions. After exhausting other avenues, Google formally filed a certiorari petition with the U.S. Supreme Court on April 27, 2026.

Google focuses its appeal on two legal fronts in an attempt to fundamentally undermine the validity of the rule. First, Google points out that the rule was created without the notice-and-comment process required by the Administrative Procedure Act (APA), rendering it procedurally improper. It is effectively the product of the USPTO Director's personal authority, rather than a formally adopted rule with lasting application.

Google's core argument is that under the America Invents Act (AIA), the only statutory deadline Congress established for IPR proceedings is that a petition must be filed within one year after being sued for infringement; Congress did not authorize the USPTO to create its own "non-statutory time-bar" based on patent age. Therefore, Google contends that the "settled expectation" rule exceeds the USPTO's statutory authority.

Because this case touches upon the fundamental legal issue of agency power, its trajectory is being closely watched. Whether the Supreme Court agrees to hear the case or not, the consequences will be far-reaching. China Intellectual Property Lawyer Network will continue to follow future developments.