October 20, 2026|Client Alerts
By Madhumita Datta
Summary
On October 19, 2026, the U.S. Supreme Court declined to hear Google’s challenge to the USPTO’s “settled expectations” doctrine. Under this doctrine, the Patent Trial and Appeal Board (PTAB) may refuse to institute inter partes review (IPR) of a patent based mainly on how long it has been in force. The denial leaves the Federal Circuit’s rulings undisturbed. It does not decide whether the policy is legal. For now, companies accused of infringing patents that are roughly six or more years old should assume IPR may not be available. They should plan to litigate invalidity in district court or at the ITC.
The Doctrine
The doctrine started with then-Acting Director Coke Morgan Stewart’s March 26, 2025 memorandum. That memo listed “settled expectations of the parties, such as the length of time the claims have been in force” as a factor in discretionary denial under 35 U.S.C. § 314. Stewart said there is no bright-line rule. Her reasoning was that the longer a patent has been in force, the more settled the expectations should be.
The first application came in iRhythm Technologies v. Welch Allyn (June 2025). There, the Director denied six IPRs even though other factors favored institution. The decision relied heavily on the age of a patent in force since 2012. It also noted that the petitioner had known about the patent for years. In practice, the USPTO has generally used six years in force as the threshold for “strong settled expectations.” This loosely tracks the six-year limit on damages in infringement suits.
Current Director John Squires has continued to apply the doctrine.[1]
The Google v. VirtaMove Case
Canadian software company VirtaMove accused Google of infringing upon its patents related to containerization systems and portable computing environments (including U.S. Patent Nos. 7,519,814, 7,784,058, and 7,774,762).
In January 2025, Google petitioned for IPR at the PTAB. The Acting Director denied institution. Her reasoning was that the patent had gone more than 14 years without a validity challenge, which created “strong settled expectations.” The U.S. Court of Appeals for the Federal Circuit ruled against Google and denied its petition for a writ of mandamus.
Google petitioned the U.S. Supreme Court, arguing that the USPTO exceeded its statutory authority by inventing extra-statutory time limits and restrictions that Congress never enacted. The case was distributed for the Supreme Court’s conference on October 16, 2026.
Specifically, Google’s cert petition asked the Supreme Court two questions:
- Does the PTO lack statutory authority to deny institution based on settled expectations, given that patents can be challenged at any point in their life?
- Can courts review institution denials that rest on grounds contrary to the statute?
At least seven amicus briefs supported Google, including from Unified Patents, the PTAB Bar Association, the Association for Accessible Medicines, and a group of IP law professors. The government urged the Court not to take the case, and the Court denied review.
What the Supreme Court Hearing Denial Means and Doesn’t Mean
What it means: The Federal Circuit has so far declined to review challenges to settled expectations. Courts have treated institution decisions as largely unreviewable, with the Supreme Court’s 2016 decision in Cuozzo cited as the key authority. As a result, there is currently no reliable path to overturning a settled-expectations denial in court.
What it doesn’t mean: The Court has not endorsed the doctrine, and the issue is still open in other cases, such as Kahoot! Petition (Petition for a Writ of Certiorari, Kahoot! AS v. Interstellar Inc., No. 26-198 (U.S. filed July 24, 2026)).
Practical Takeaways
For accused infringers and IPR petitioners:
- File early. Watch competitor portfolios and consider IPRs, or ex parte reexamination where appropriate, before patents reach the roughly six-year mark. Don’t wait for a lawsuit.
- Address settled expectations directly in the petition. Explain why the expectations are not truly settled: for example, the patent was only recently asserted, it went unenforced for years, its claim scope changed, or the prior art is new.
- Prepare to contest invalidity in court. Plan the litigation budget and expert work assuming IPR will be denied.
For patent owners:
- Patent age is now a defensive asset. Raise settled expectations in discretionary-denial briefing on any patent near or past six years in force, and support it with evidence of reliance, investment, and licensing history.
- Factor this into enforcement decisions. Older patents carry less IPR risk, which can affect which patents to assert and when to approach licensees.
For portfolio and transaction work: In diligence and valuation, account for the fact that older patents now face less administrative invalidity risk.
Looking Ahead
This ruling is not the end of battle over the settled expectations doctrine. Watch the Court’s action on the Kahoot! Petition, along with any guidance from the USPTO on how it will apply the doctrine.
[1] According to an April agency report, the PTAB’s institution rate dropped to 37% in 2026, down from 65% under former Director Kathi Vidal. It is to be noted that the “settled expectations” doctrine is not the grounds for all the IPR institution denials.
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