Can a Patent Ever Be Too Old to Challenge?

The U.S. Supreme Court may soon weigh in on a dispute that could reshape patent challenges before the Patent Trial and Appeal Board (PTAB). At the center of the debate is the U.S. Patent and Trademark Office’s relatively new “settled expectations” doctrine, a policy that has made it more difficult to challenge older patents through PTAB proceedings.

Recently, a coalition of computer and automotive industry groups filed an amicus brief supporting Google’s effort to obtain Supreme Court review, arguing that the USPTO has exceeded its authority by allowing the age of a patent to play a significant role in deciding whether to institute review proceedings.

While the dispute involves technical patent procedures, the outcome could have significant implications for patent owners, technology companies, startups, and businesses facing infringement claims.

What Is the “Settled Expectations” Doctrine?

The doctrine emerged through a series of USPTO discretionary denial decisions beginning in 2025. Under the policy, the PTAB may decline to institute an Inter Partes Review (IPR) proceeding when a patent has existed long enough for the patent owner to have developed “settled expectations” regarding the validity and enforceability of those patent rights.

In practice, PTAB leadership has frequently cited the age of a patent as a factor weighing against review. Several decisions suggest that patents that have been in force for approximately six years or longer may receive greater protection from PTAB challenges based on these settled expectations.

Supporters argue that this approach promotes certainty in the patent system. Businesses often invest substantial resources developing products, attracting investors, licensing technology, or building entire business models around patents that have existed for years. They contend that there should come a point when patent owners can reasonably rely on the stability of those rights.

Why Are Technology Companies Challenging It?

Google’s petition arises from a dispute involving patents owned by VirtaMove. The PTAB denied Google’s request for inter partes review in part because the patent at issue had been in force for more than fourteen years, creating what the agency described as strong settled expectations.

Google argues in its Petition for Supreme Court Review that the USPTO has effectively created a new limitation on PTAB review that Congress never authorized. According to the petition, the Patent Act already contains specific timing requirements for filing IPR petitions, but it does not impose any age-based restriction on challenging a patent.

The supporting industry groups make a similar argument. They contend that discretionary denials based on settled expectations and other factors are reducing access to the PTAB review system that Congress created through the America Invents Act. According to the amicus brief, discretionary denials have increasingly limited the availability of PTAB review in situations where petitioners otherwise satisfy statutory requirements.

Why Patent Owners Support the Doctrine

Not everyone views the doctrine as a problem.

Many patent owners, independent inventors, and patent advocates argue that the PTAB has historically made it too easy to repeatedly challenge patents. From this perspective, settled expectations provide much-needed stability and help prevent patent owners from defending the same rights over and over again, years after a patent has issued.

Supporters also argue that businesses are more likely to invest in innovation when they can rely on the durability of their patent rights. If patents remain perpetually vulnerable to administrative challenges, the value of those rights may be diminished.

The debate therefore reflects a broader policy question: should the patent system prioritize certainty for patent owners or maximize opportunities to eliminate potentially invalid patents?

The Bigger Legal Question: Who Decides?

Beyond patent law, Google’s petition raises an important administrative law issue.

The petition asks whether the USPTO has statutory authority to deny PTAB review based on settled expectations and whether federal courts can review those decisions. Google argues that courts should be able to determine whether the agency has exceeded the limits imposed by Congress.

The Federal Circuit has thus far declined to overturn the doctrine, leaving the issue unresolved. A helpful overview of the procedural history can be found in the Federal Circuit Blog’s case summary. If the Supreme Court accepts the case, it could provide important guidance not only on PTAB practice but also on the limits of agency discretion more broadly.

What Businesses Should Watch

Whether your company owns patents or faces infringement claims, this dispute is worth monitoring.

If the Supreme Court ultimately rejects the settled expectations doctrine, older patents may become more vulnerable to PTAB challenges. On the other hand, if the doctrine survives, patent owners could gain greater certainty that long-held patents will not face repeated administrative review.

Businesses should also pay attention to broader developments at the USPTO. The agency has recently proposed additional changes to PTAB procedures, which are discussed in the USPTO’s announcement regarding proposed changes to IPR practice.

For now, the case highlights a recurring tension in intellectual property law: balancing the need for reliable patent rights with the need to remove patents that should not have been granted in the first place.

As the Supreme Court considers whether to hear Google’s petition, businesses should pay close attention. The outcome could influence patent enforcement strategies, PTAB litigation tactics, and the long-term value of patent portfolios across multiple industries.

How Griffith Barbee Can Help

Intellectual property law continues to evolve alongside innovation. Whether you are seeking to protect a patent portfolio, defend against infringement allegations, challenge a competitor’s patent, or evaluate the strength of your intellectual property assets, the attorneys at Griffith Barbee are here to help.

Our team regularly advises businesses on patent strategy, intellectual property disputes, and PTAB-related proceedings. If you have questions about patents, trademarks, copyrights, trade secrets, or other intellectual property matters, contact Griffith Barbee to discuss your options.