Google’s Challenge to PTAB Limits Puts Reliance and Balance on the Line

In its recent petition to the U.S. Supreme Court, Google argues that patents can be invalid at any time, even decades after issuance, and therefore should remain open to inter partes review (IPR) challenges, regardless of age or how long they have been relied upon. At first glance, this sounds like a defense of patent quality. Coming from one of the most frequent users of the Patent Trial and Appeal board (PTAB) over the past decade — and arriving just as the U.S. Patent and Trademark Office’s (USPTO’s) “settled expectations” doctrine begins to limit late-stage IPR challenges — it raises a sharper question: why now?

For more than a decade, the PTAB shaped outcomes through doctrines never written into the statute — Fintiv, General Plastic, Sotera. Those frameworks influenced when and how challenges proceeded, often expanding access to review, and were built largely in response to heavy use by sophisticated repeat petitioners. Those shifts unfolded in plain view, without urgent calls for Supreme Court intervention. The urgency has surfaced only now, as the parties most reliant on the PTAB begin to face new limits.

Settled Expectations

Google’s framing is straightforward: a patent might still be invalid, so it should never be “settled.” That framing skips two critical questions: who decides a patent is invalid, and what does “settled” actually mean? Recognizing settled expectations does not make a patent immune from challenge. Validity can still be tested in district court and through other administrative avenues. What it does is place a boundary on late-stage, repeated IPR petitions after years of reliance. The issue is not whether patents can be challenged — it is whether they can be challenged endlessly, in the same forum, long after the underlying rights have been built upon.

Settled expectations restored something the patent system was losing — the confidence of innovators, and of the investors who back them, that an issued patent is a durable property right rather than a perpetual target. A patent invalid at issuance is no less invalid six years on. But invalidity has always had a forum. The district court, with its Article III judge and clear-and-convincing standard, remains fully open to anyone willing to prove a patent shouldn’t have issued. IPR was designed to complement that forum, not displace it.

The America Invents Act (AIA) never created a category of “bad patents” based on ownership, nor authorized a system in which patents are presumed suspect simply because they are asserted years later. Yet, for much of its history, the PTAB functioned as if it had — high institution rates, common serial challenges, patents repeatedly pulled back into administrative review years into their life.

Consider the patent at the center of Google’s petition. It issued in 2010. It is owned by VirtaMove, a small software company developing application migration technology — not a shell entity, but a company with products, patents, and litigation against major industry players. If a patent like this, owned by a company like this, still falls into the category of perpetual suspicion, the label has lost meaning.

Measuring Harm

As I (Molly Metz) have written on IPWatchdog before, I have experienced the cost of ignoring reliance firsthand. In 2018, after nearly a decade of manufacturing, licensing, and enforcement, a case against an infringer of my patents was stayed for IPR — at a time when institution was widely expected once a petition was filed. The reality of reliance — real business activity, real agreements, real investment — did not meaningfully factor into that decision. Over the next four years, the process eliminated licensing opportunities and resulted in the invalidation of patents I had built a business around — and the loss of the employees who built it with me. Settled expectations is the policy that would have changed that outcome.

Google argues that limiting late-stage IPR will harm innovation. The empirical case is not there. A decline in institution rates may reflect greater scrutiny of petitions, not weaker review. A shift toward district court may simply reflect what the AIA contemplated: administrative review supplementing, not replacing, the judicial system. Notably, Google itself was denied review under the very policy it now challenges.

Whose Incentives Shape the PTAB?

This is not a case of unequal treatment. It is a case of changing incentives. For over a decade, the PTAB was shaped by those who used it most. Now that the system imposes limits tied to time, reliance, and real-world use, the loudest objections come from the same parties that benefited from its earlier design. The question is not whether the USPTO can recalibrate — it clearly can. The question is when that authority becomes unacceptable, and whether the answer depends on who benefits. A patent system must do more than allow challenges. It must also allow reliance.