'Shenanigans' at the PTO?

Attorneys are divided about whether the U.S. Supreme Court will hear a petition by Google that makes it virtually impossible to challenge the validity of a patent if it is more than six years old.

The success of the company's writ of certiorari may turn on how the justices view a single word: shenanigans.

Eight years ago, the court in a 5-4 decision ruled that the U.S. Patent and Trademark Office, if it institutes inter partes review based on challenges to patents by an accused infringer, must issue a decision on each claim challenged by the petitioner - not just some of them.

The key question is whether the justices will take the Google case -- and, if they do, whether they will find the patent office has exceeded its authority.

Justice Neil M. Gorsuch ruled in 2018 that courts could intervene with appointed officials engaged in "shenanigans" beyond their statutory bounds. SAS Institute Inc. v. Iancu et al., 16-969 (S. Ct., filed Jan. 31, 2017).

The new Trump administration policy is different, in that patent office director John A. Squires often denies institution of inter partes review of any older patents in what previously had been a routine approval by administrative judges on the Patent Trial and Appeal Board.

Squires' rationale is "settled expectations," the idea that patents should be presumed valid after six years.

That doesn't mean defendants -- which are often large technology companies -- cannot argue the patent is invalid if sued in district court. But that is a much longer and costlier process, often prompting them to settle complaints.

Inter partes review challenges allowed to go forward by Squires and his acting predecessor plummeted from 65% to 37% between October 2024 and February 2026, according to the patent office, and the number of petitions dropped as patent lawyers adjusted.

The U.S. Court of Appeals for the Federal Circuit has rejected multiple challenges to the policy, which was first introduced in March 2025 after President Donald Trump took office.

Ginger D. Anders, a partner with Munger, Tolles & Olson LLP, who represents the Alphabet Inc. subsidiary, argued in her writ of certiorari last week that the patent office lacks authority under the 2011 America Invents Act to refuse to allow the PTAB to review patents.

"The Federal Circuit has held that courts lack any power whatsoever to review whether the PTO has violated the patent statutes in denying inter partes review (IPR) -- no matter how outrageous the PTO's violation of its statutory authority," she wrote.

"That abdication of judicial review flies in the face of the bedrock Article III principle that it is the federal courts, not administrative agencies, that have the authority and duty to determine the bounds of agency discretion," Anders added, citing the Supreme Court's decision in Loper Bright Enterprises v. Raimondo, 2024 DJDAR 5966 (S. Ct., filed Nov. 10, 2022).

She said Squires' rule "contradicts a fundamental premise of the patent system," adding that invalid patents don't magically become valid just because they are older.

Google is the first company to seek Supreme Court review of Federal Circuit decisions upholding the patent office director's authority, and several attorneys said they - or their clients - plan to file amicus briefs supporting the Mountain View company.

Jose Casteneda, a Google spokesman, attributed the inter partes review drop to a 16% increase in patent infringement lawsuits last year, and a 19% hike in complaints by non-practicing entities, in part due to the new patent office policy - which leaves infringement disputes to be decided in the courts.

"We are seeking the Supreme Court's guidance to ensure the patent system provides the stability American businesses need," he said.

Megan F. Raymond, a partner with Groombridge, Wu, Baughman & Stone LLP who specializes in PTAB trials and represents life science patent owners as well as technology companies accused of infringement, described the inter partes review debate as "a huge question that many would like to see answered in a more final way."

Jonathan D. Masur, a professor at the University of Chicago Law School, said Google has a compelling argument, at least on principle, but not one he thinks will interest the justices.

"The PTO has effectively created a statute of limitations," he wrote in an email. "That is typically a job reserved to Congress, and Congress did not elect to impose a statute of limitations on inter partes review."

"But as a matter of law, Google does not have a leg to stand on," Masur added. "I would be very surprised if the Supreme Court elected to take this case."

Mark A. Lemley, a Stanford Law School professor and partner with Lex Lumina LLP, thought the court may well take the case to resolve the issue itself, instead of leaving the matter to Federal Circuit decisions.

"The Supreme Court left open the possibility of review in case of just the sort of 'shenanigans' (its word) that the PTO is engaged in," he said. "And because the Federal Circuit has repeatedly refused to review these petitions, the Supreme Court is the only recourse."

Nathan N. Lowenstein, managing partner of Lowenstein & Weatherwax LLP in Santa Monica, wrote in an email that he thinks the odds of the Supreme Court granting cert are "very low."

"The Court rarely grants review, and 35 U.S.C. § 314(d) makes clear that institution decisions are 'final and nonappealable.' Loper Bright addresses agency action, not -- as here -- an agency declining to act," he added.

But Benjamin J. Bradford, a Jenner & Block LLP partner, said that while all writ petitions to the Supreme Court are longshots, Google's investment in the petition and the anticipated public scrutiny suggests it has a "reasonable chance" of being granted.

"The agency review connection is potent -- as Google argues, a case where a federal agency has effectively rewritten a statute through unreviewable discretion, and the reviewing court says Article III is powerless, is a natural sequel to the Court's landmark decision reestablishing judicial primacy over statutory interpretation," he added.