Amici Tell Justices to Rein In USPTO’s ‘Settled Expectations’ Doctrine

Following a July petition for writ of certiorari filed by Kahoot AS! asking the U.S. Supreme Court to consider whether the U.S. Patent and Trademark Office’s (USPTO’s) “settled expectations” doctrine for denying inter partes review (IPR) requests is authorized under the patent statute, the PTAB Bar Association and other amici this past week have urged the Court to take up the case.

In February, the U.S. Court of Appeals for the Federal Circuit (CAFC) denied Kahoot!’s petition for writ of mandamus challenging the USPTO Director’s refusal to institute IPR of Interstellar Inc.’s U.S. Patent No. 10,339,825 based on Interstellar’s settled expectations. The patent covers an “on-line academic competition” system.

The Director’s denial reasoned that the patent had been in force for over six years, which created “strong settled expectations” for the patent owner. The Director also determined that an IPR would be an “inappropriate use of [Patent Trial and Appeal] Board resources under these circumstances.”

The “settled expectations” doctrine came into play under then-Acting Director Coke Morgan Stewart, who explained that while there is no bright-line rule, “the longer the patent has been in force, the more settled expectations should be.”

Kahoot!’s petition argues that “the [America Invents Act] AIA does not authorize the PTO to impose an age-based limit as a condition of inter partes review eligibility.”

Under the statute, argues Kahoot!, the only age-based restriction is that an IPR may not be filed “until nine months elapse from the grant of the patent,” and the only other time-based limit is that an IPR petition may not be filed more than one year after service of an infringement complaint.

The PTAB Bar Association’s amicus brief, filed September 16, argues that the doctrine “exceeds the Office’s statutory authority” under the AIA and that, “contrary to the Federal Circuit’s recent holdings, judicial review remains available to police the outer statutory boundaries of the USPTO’s discretion.”

The Federal Circuit has thus far declined to review challenges to the settled expectations doctrine.

Another amicus brief, filed by 38 IP law professors, argues that the Federal Circuit’s refusal to rein in the doctrine warrants SCOTUS review, and charges that settled expectations is indicative of the Director and former interim Director’s substitution of “their personal animosity toward inter partes review (IPR) for the text of the Patent Act and congressional intent.”

Separately, IPWatchdog learned last week that USPTO Director John Squires has informed the Administrative Patent Judges (APJs) on the PTAB that he will be relinquishing decision-making authority on which patent challenges to institute, returning the decision to the PTAB. This raises questions of whether the pivot reflects a policy course correction or merely a response to immediate oversight pressure.

However, institutions and denials reported in July 2026 and August 2026 compared with the numbers reported through June 2026 show that the institution rate has already ticked up. There were 42 petitions instituted in July and August 2026, and 36 petitions denied during that same timeframe, which represents a 54% institution rate in July and August 2026, compared with an overall 40% institution rate through the first 11-months of FY 2026.