CAFC Again Declines to Overturn USPTO’s ‘Settled Expectations’ Doctrine

The U.S. Court of Appeals for the Federal Circuit (CAFC) has denied another petition for writ of mandamus seeking to challenge the U.S. Patent and Trademark Office’s (USPTO’s) so-called settled expectations doctrine, which was introduced by then-Acting Director Coke Morgan Stewart.

In the present case, Google sought mandamus relief after the USPTO denied its petitions for inter partes review (IPR) of VirtaMove Corp.’s U.S. Patent No. 7,519,814 patent because “the patent[] ha[s] been in force for more than 14 years, creating strong settled expectations.”

On June 9, 2025, Stewart first issued a decision in which she granted discretionary denial based on the patent owner’s argument that “because one of the patents has been in force since as early as 2012 and Petitioner was aware of it as early as 2013…settled expectations favor denial of institution.” Stewart found this argument persuasive despite several other factors that weighed against granting discretionary denial. That decision was seen as creating a new basis for discretionary denial.

In subsequent decisions, the Director has found that patents as young as six can qualify for “settled expectations.”

In November 2025, the CAFC issued a precedential decision in In Re Motorola Solutions, Inc., rejecting Motorola’s arguments that Stewart violated the Administrative Procedure Act (APA) and the Due Process clause of the Fifth Amendment to the Constitution by de-instituting eight IPR petitions it filed against claims of Stellar LLC’s patents.

On the same day, it denied two other similar petitions in In re Google LLC and In Re SAP America, Inc.

In December 2025, the court also denied mandamus petitions in the closely-watched case of In Re Cambridge Industries USA Inc. and in In Re Sandisk Technologies, Western Digital Technologies, Inc., refusing to upset the settled expectations basis for discretionary denial, but it left the door open to other means of challenging the settled expectations rule, emphasizing that “we do not decide whether the PTO’s actions are correct or whether the use of this factor is permitted under the statutes.”

Today, the CAFC reiterated these points and said that Google had not shown “a right to a different conclusion here based on Celgene Corp. v. Peter, 931 F.3d 1342, 1362 (Fed. Cir. 2019)—a case that did not involve or address the limits on our review of a denial-of-institution determination but rather whether final written decisions invalidating the challenged patent claims violated the Takings Clause.”