On 19 October 2026, the US Supreme Court denied Google’s petition in Google v. VirtaMove (No. 25-1230), leaving in place a United States Patent and Trademark Office (USPTO) decision that refused inter partes review (IPR) of an older patent because of the patent owner’s settled expectations. The order closes the most visible judicial route for challenging this form of discretionary denial.
For companies facing assertions of mature patents, it suggests that the Patent Trial and Appeal Board (PTAB) is a less predictable first stop for validity challenges, particularly against older patents.
What happened
Google filed two IPR petitions against a VirtaMove patent on 31 January 2025. VirtaMove had asserted the patent, which issued in 2010, against Google in litigation. On 11 July 2025 the USPTO denied institution on discretionary grounds, reasoning that a patent in force for more than 14 years carried strong settled expectations, according to Google’s petition.
Google asked the Court of Appeals for the Federal Circuit for a writ of mandamus. On 27 January 2026 that court refused, relying on its earlier orders that had rejected similar mandamus challenges to the settled expectations factor.
Google then petitioned the Supreme Court on 27 April 2026. It asked whether the USPTO has statutory authority to deny review on settled expectations grounds, and whether courts can review a denial said to be contrary to the statute. The petition argued that the Office had denied hundreds of petitions on this basis, often with patent age as the deciding factor.
The Court requested a response in June 2026. VirtaMove and the federal government both filed briefs in opposition, urging the Court to leave the Federal Circuit’s approach in place. After its 16 October conference, the Court listed the case under certiorari denied in its order list of 19 October 2026. A denial is not a ruling on the merits, but it leaves the Federal Circuit’s approach untouched.
A pattern in the Federal Circuit
The refusal follows a consistent Federal Circuit line. In In re Motorola Solutions (6 November 2025), the court denied mandamus after the Acting Director deinstituted IPRs because of parallel litigation. Motorola had challenged the February 2025 rescission of a 2022 memorandum that limited such denials. The court found no protected property interest and pointed procedural complaints towards a district court suit under the Administrative Procedure Act (APA).
In In re Cambridge Industries (9 December 2025), the court turned to settled expectations directly. The USPTO had denied two IPRs because the patents had been in force for 9 and 7 years. The court again denied mandamus, treating the attack on the factor as a dispute about institution standards, which section 314(d) generally shields from review.
Both orders left the merits of the USPTO’s approach undecided. VirtaMove adds a further layer, because the Supreme Court has now declined to take up the statutory question.
The wider picture at the PTAB
The settled expectations factor first appeared in a memorandum of 26 March 2025 from then Acting Director Coke Morgan Stewart. It split institution into a discretionary stage decided by the Director and a merits stage before a PTAB panel, and it counted how long the claims had been in force as a factor.
On 17 October 2025 the USPTO proposed going further. In practice, the proposal would make IPR a replacement for prior art defences in court, not an addition. It would also close IPR where another forum has ruled or is likely to rule first.
The filing data is consistent with this shift. The Unified Patents report for the third quarter (Q3) of 2026, published on 16 October 2026, counted 106 PTAB petitions, down 70.1% on Q3 2025 but up 51.4% on the second quarter. Ex parte reexamination requests reached 198, after a record 331, as noted in the patent news roundup of 20 October.
Supporters of the policy say it protects patent owners from repeated challenges and gives older patents the certainty that investment depends on. Critics say it shields weak patents from the fastest and cheapest validity forum.
What it means for defendants, patent owners and research teams
For accused infringers, IPR can no longer be assumed, especially against patents that have been in force for many years. Validity strategy has to work in district court, where invalidity must be proved by clear and convincing evidence, and in ex parte reexamination, which rests only on patents and printed publications.
That puts more weight on the prior art found early. A thorough invalidity search before the first response to a demand letter now shapes the whole defence, not just a possible petition.
For patent owners, mature patents carry more weight in licensing talks, since the cheapest challenge route is less available. For research and development (R&D) teams, freedom to operate reviews should flag older patents in their field, because those are the patents least likely to be cleared through the PTAB.
Synoptic IP’s view
Three points shape this view. The Federal Circuit has rejected each mandamus challenge brought so far, the Supreme Court has declined the statutory question, and the USPTO has proposed rules that would place further limits on IPR in regulation. Petition numbers show that users have already adjusted.
Synoptic IP’s view is that the VirtaMove denial is likely to settle the practical question for the near term. The settled expectations factor can reasonably be treated as a lasting feature of IPR practice. The consequence is a shift in where validity is tested. Defendants are likely to rely more on ex parte reexamination and district court, so their prior art must be strong enough without the lower PTAB burden of proof.
The strongest counter-argument is that a certiorari denial decides nothing. The policy could still change through an APA suit, a final rule that differs from the proposal, a new Director or legislation. The 51.4% quarterly rise in petitions also suggests that some challengers are still finding a way in. Those are fair points, but none offers relief on the timescale of a live dispute, which is why the current practice is the more realistic basis for planning.
If you are preparing a validity challenge outside the PTAB, our patent invalidity search team can find and chart the prior art. Our guide to the invalidity search process and cost explains what to expect.
This article is commentary and opinion based on public reports as of 26 October 2026 and is not legal advice.
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