IPR Discretionary Denial After Google v VirtaMove

Published 20 October 20268 minute read

On 19 October 2026 the US Supreme Court refused to hear Google LLC v VirtaMove, Corp. (No. 25-1230). Google had asked the Court to review the USPTO practice of refusing inter partes review of older patents because of the patent owner's "settled expectations". The refusal leaves IPR discretionary denial based on settled expectations in place for now.

For any company sued for patent infringement in the United States, inter partes review (IPR) has been the cheapest and fastest way to attack a patent. Since 2025 the USPTO has used its discretion to deny many petitions before looking at the prior art. This article explains what the Supreme Court did and did not decide, where the settled expectations factor comes from, what remains open, and how the position compares with India and Europe.

Key points

The Supreme Court denied certiorari in Google v VirtaMove on 19 October 2026. A denial is not a ruling on the merits.
The USPTO may still weigh how long a patent has been in force when it decides whether to institute IPR.
Two related petitions, Kahoot! v Interstellar and Intel v Squires, are still pending.
Defendants should plan to prove invalidity in court and should consider challenging patents early.
India and Europe have no comparable discretion to refuse a validity challenge because a patent is old.

What happened in Google v VirtaMove

VirtaMove sued Google for infringement. Google filed IPR petitions against VirtaMove patents. Two of them, IPR2025-00487 and IPR2025-00488, are the subject of this case. The USPTO denied institution on discretionary grounds on 11 July 2025. It reasoned that the patent had been in force for more than 14 years, which created strong settled expectations. It also found that Google had not shown that review would be an appropriate use of Office resources.

Google asked the Federal Circuit for a writ of mandamus. On 27 January 2026 a panel of Judges Lourie, Wallach and Stoll denied the petition in a nonprecedential order (In re Google LLC, No. 2026-111). The court followed its recent decisions rejecting similar mandamus challenges to the settled expectations factor.

Google filed its petition for certiorari on 27 April 2026. Several amici filed briefs, including Unified Patents, the PTAB Bar Association, the Association for Accessible Medicines and a group of 35 law professors. The Court called for a response. VirtaMove filed its brief in opposition on 13 July 2026 and the Solicitor General filed one for the USPTO on 11 September 2026. The petition was considered at the conference of 16 October 2026 and denied on 19 October 2026.

Where the settled expectations factor comes from

The America Invents Act does not mention the factor. The USPTO treats it as part of the Director's discretion under section 314(a), and it comes from USPTO guidance. On 26 March 2025 the then Acting Director, Coke Morgan Stewart, issued a memorandum on "Interim Processes for PTAB Workload Management". It split institution into two stages. The Director first decides whether to deny a petition on discretionary grounds, after briefing from both sides. Only petitions that survive that stage go on to the merits.

The memorandum listed the factors the Director would weigh. One of them is the "settled expectations of the parties, such as the length of time the claims have been in force". Others include earlier validity decisions, the strength of the challenge, reliance on expert testimony, and economic, public health or national security interests.

The first major application came in iRhythm Technologies v Welch Allyn on 6 June 2025. The Acting Director denied five IPR petitions. One patent had been in force since 2012, and the petitioner had cited the patent owner's application in its own filings in 2013. The decision held that the petitioner's awareness of the applications "and failure to seek early review of the patents favors denial".

On 17 October 2025 Director John Squires went further. From 20 October 2025 the Director decides institution of IPR and post grant review personally, in consultation with at least three PTAB judges, usually by a summary notice without reasons. The same day the USPTO published a proposed rule (90 FR 48335). It would bar IPR where a petitioner will not give up its anticipation and obviousness defences elsewhere, where the claims have already been upheld, or where another forum is likely to decide validity first. The USPTO sent a final rule for White House review in July 2026. We have not found it published in the Federal Register.

The practical effect has been large. Reuters reports that, according to an April agency report, the share of petitions instituted fell to 37% in 2026, from 65% under the previous Director.

What the Supreme Court decided, and what it did not

A denial of certiorari decides nothing about the law. It does not approve the settled expectations factor, and it sets no precedent. The Federal Circuit order under review was also nonprecedential, and it applied the demanding mandamus standard. No appellate court has yet held, on full merits review, that the factor is lawful.

The legal obstacle for petitioners is statutory. Under 35 U.S.C. § 314(d) the decision whether to institute IPR is "final and nonappealable". In its brief VirtaMove relied on that provision and on the Supreme Court's decision in Cuozzo Speed Technologies v Lee (2016). It argued that a challenge to the policy as an unlawful rule belongs in a district court action under the Administrative Procedure Act, as in Apple v Vidal.

Two related petitions remain before the Court. In Kahoot! AS v Interstellar Inc (No. 26-198), filed on 24 July 2026, Kahoot challenges a denial based on settled expectations. The government filed its brief in opposition on 16 October 2026. In Intel Corp v Squires (No. 26-73), Intel and Google ask whether section 314(d) bars APA challenges to the USPTO's Fintiv rule on parallel litigation. The Federal Circuit ruled against them on 13 February 2026. The government filed its opposition on 14 October 2026. Neither petition had been decided when this article was written.

What this means for Indian and other foreign companies

Indian IT, pharmaceutical, electronics and engineering companies are often defendants in US patent suits. Patents asserted in such suits have often been in force for many years. For these companies, IPR is now much less reliable.

The difference matters. In IPR the petitioner must prove unpatentability by a preponderance of the evidence under 35 U.S.C. § 316(e). In court, a patent is presumed valid and invalidity must be proved by clear and convincing evidence. Losing access to IPR therefore raises both the cost and the risk of a defence.

Practical steps for defendants and companies entering the US market:

Watch patents in your field from grant. The iRhythm decision counted the petitioner's early knowledge of the patent against it.
Where a patent is a real risk, consider a challenge early, before the patent ages and before any suit.
Record when and how your business first learned of a patent. The record may matter in a discretionary denial brief.
Build the invalidity case for court from the start, and do not assume that an IPR will be instituted.
Consider ex parte reexamination, which follows a different statutory route, but note that the requester has a very limited role after filing.

For patent owners, the position is the reverse. A US patent that has been in force for some years is now harder to attack at the PTAB, and that strengthens licensing and settlement positions. Our international patent support team can help coordinate US prosecution and validity strategy with Indian and European filings.

How India and Europe compare

India. The Patents Act, 1970 gives several routes to challenge a patent, and none depends on the Patent Office's discretion about the age of the patent. Any person may file a pre grant opposition under section 25(1). Any person interested may file a post grant opposition under section 25(2) within one year from the publication of the grant. After that, a person interested may petition for revocation under section 64, and a defendant may counterclaim for revocation in an infringement suit. These revocation proceedings are now heard by the High Courts. In Aloys Wobben v Yogesh Mehra (2014) the Supreme Court held that a person who uses post grant opposition, a revocation petition or a counterclaim cannot use another. The choice of route therefore needs care. Our guide to India patent filing for foreign applicants explains how oppositions fit into prosecution.

Europe. Under Article 99(1) EPC any person may file an opposition at the EPO within nine months of the mention of grant. An admissible opposition is examined. There is no discretionary filter like the USPTO's. After that window, validity is challenged in national courts or at the Unified Patent Court. A revocation action at the UPC does not require an earlier opposition and has no fixed time limit. Our article on UPC opt out timing in Sidel v Omnia explains when a European patent falls within the UPC's jurisdiction.

The UK, China and Japan. These systems also allow validity to be challenged throughout the life of a patent, through revocation actions in the UK and invalidation proceedings before CNIPA and the JPO. None of them refuses a challenge because the patent has been in force for a long time.

The contrast is plain. In India and Europe the age of a patent may affect remedies, delay arguments or costs. It does not, by itself, close the door to a validity challenge. In the United States it can now close the PTAB door, though court remains open.

Frequently asked questions

What does settled expectations mean in IPR?

It is a factor the USPTO weighs when deciding whether to deny IPR on discretionary grounds. The longer a patent has been in force, and the longer the petitioner has known of it, the more the factor favours denial.

Did the Supreme Court uphold the USPTO's discretionary denial policy?

No. The Court only declined to hear Google's case. A denial of certiorari does not decide whether the policy is lawful. Related petitions, including Kahoot on settled expectations, are still pending.

Can an Indian company still challenge a US patent?

Yes. It can still file an IPR petition, though institution is less likely for older patents. It can also seek ex parte reexamination or prove invalidity in a district court, where the standard of proof is higher.

IPR discretionary denial and settled expectations after Google v VirtaMove