Supreme Court declines to review the Office's settled-expectations denials, in a year when 36 percent of electrical and computer petitions were instituted

2026-10-19Supreme Court

Listen · Thinking Makes It So, 2026-10-26 · 10 min

All episodes · Subscribe: Apple Podcasts · Spotify

Google LLC v. VirtaMove, Corp., No. 25-1230 (U.S. Oct. 19, 2026) (petition for a writ of certiorari denied), leaving in place In re Google LLC, No. 2026-111 (Fed. Cir. Jan. 27, 2026) (nonprecedential) (mandamus denied); United States Patent and Trademark Office, Patent Trial and Appeal Board Trial Statistics, fiscal year 2026 (October 1, 2025 through September 30, 2026)

Google asked whether the Office lacks statutory authority to deny institution of inter partes review on "settled expectations" when the statute allows review at any time in a patent's life, and whether courts may review a denial that rests on a ground contrary to statute. The Office had refused to institute IPR2025-00487 and IPR2025-00488 against VirtaMove because the patent had been in force for more than fourteen years, and the Federal Circuit denied mandamus on January 27, 2026, following its orders in In re Cambridge Industries and In re SanDisk. The Court requested a response, the Solicitor General filed it on September 11, 2026 after two extensions, and the petition was denied on the October 19 order list without comment. The Office's trial statistics for the fiscal year that ended September 30, 2026 show 500 petitions filed, 452 of them for inter partes review, and, of 931 institution decisions, 379 instituted and 552 denied, a rate of 41 percent; in electrical and computer technology, the field in which, by my reading, most artificial intelligence and software patents are challenged, 212 of 586 decided petitions were instituted, 36 percent, the lowest of the five technology fields. Across all fields, 782 petitions reached the Director's discretionary stage, where 438 were denied and 344 referred on, and of 493 decided on the merits or other considerations, 379 were granted.

What it changesThe Court has declined, for now, to review the Director's use of a patent's age as a reason to refuse review. For the holder of an older artificial intelligence or software patent, the Office's practice, which the denial leaves in place, bears on the maintenance-fee decision: a claim that still reads on current systems is harder to challenge at the Board than it was two years ago, when the Office instituted 68 percent of petitions in all fields against 41 percent this year, which is a reason to pay the fee on it rather than let it lapse. For a company already accused of infringing such a patent, the Board is no longer the default venue, with just over a third of electrical and computer petitions instituted, and the realistic alternatives are an ex parte reexamination request, which turns on a substantial new question of patentability rather than on the patent's age, and the district court. Upon review, I conclude that the discretionary stage is where petitions now fail: across all fields, four of every five denials came at that stage, and 77 percent of the petitions decided at the merits stage were instituted. The Office's figures do not break that stage out by technology, so the same split cannot be confirmed for electrical and computer petitions alone.

More on Litigation, damages and PTAB challenges · Fees, term and prosecution statistics

← All recent developments · Search all developments

Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

This is general information about a published decision, agency guidance or piece of legislation. It is not legal advice and does not create an attorney-client relationship. Items concerning offices outside the United States are reported for information only and are not counsel on the law of those countries.