SHENANIGANS? Amici Petitions Federal Circuit on USPTO Director’s 'Settled Expectations' IPR Policy
Prof. Mark Lemley and 20+ IP professors send a message
A contentious new policy at the U.S. Patent and Trademark Office (USPTO) that effectively shields a vast number of patents from administrative challenges is headed to the U.S. Court of Appeals for the Federal Circuit. In a petition for a writ of mandamus, petitioners argue that the USPTO’s Deputy Director Coke Morgan Stewart (as interim director) has unlawfully implemented a “settled expectations” doctrine to systematically deny meritorious inter partes review (IPR) petitions. A group of prominent intellectual property professors has weighed in with an amicus brief—with the word “shenanigans” appearing four times—arguing that the policy is not a valid exercise of discretion but rather an attempt to dismantle a system established by Congress, warranting the court’s extraordinary intervention.
The cases, In re: Sandisk Technologies, Inc., Western Digital Technologies, Inc., No. 2025-152 (Fed. Cir., filed 2025), place the Federal Circuit in the critical position of defining the boundaries of the USPTO Director’s authority to shape the IPR landscape, if the CAFC decides to opine.
The Amici Curiae
The amicus brief was authored by Mark A. Lemley of Stanford Law School and joined by approximately two dozen other leading intellectual property and innovation professors. The signatories represent a wide range of academic institutions—including professors from Harvard, Georgetown, Berkeley, Vanderbilt, Drexel, St. Louis University School of Law, Northeastern, and Santa Clara University—lending significant weight to the legal considerations presented to the court.
Unified Patents and a coalition of industry groups (represented by former Acting Solicitor and Acting Director of the USPTO, Joseph Matal of CLEAR IP, LLC) also submitted briefs.
Background of the Dispute
The controversy stems from a series of discretionary denials of IPR petitions issued by the USPTO’s Interim Director. An IPR is a trial proceeding conducted at the Patent Trial and Appeal Board (PTAB) to review the patentability of one or more claims in a patent. Established by the America Invents Act (AIA), the IPR process was originally designed to be a more efficient and cost-effective alternative to district court litigation for challenging the validity of issued U.S. patents.
However, according to the amicus brief, “The interim PTO Director began rejecting meritorious IPR petitions in early 2025 on the theory that the patent owner had a ‘settled expectation’ that their patent wouldn’t be challenged” (p. 2).
This policy posits that after a patent has been in force for a certain period—often cited as six years—the patent owner acquires an interest that weighs against an IPR challenge. The policy’s reach is rather broad, with the Director having “suggested that a patent in force for as little as two years may have such expectations” (p. 3).
According to the professors, this policy has been applied retroactively to deny nearly four hundred IPR petitions, causing the institution rate to plummet and insulating a significant majority of issued patents from this form of administrative review.
Petitioners Sandisk and Western Digital now seek a writ of mandamus—an extraordinary judicial remedy. They argue that the Director’s denials are not appealable through normal channels, making mandamus “the only available vehicle to correct” the issue (p. 10).
The Amici’s Analysis: An Unlawful Usurpation of Congressional Authority
The central legal issue, as framed by the amicus brief, is whether the USPTO Acting Director’s creation of the “settled expectations” doctrine represents a legitimate exercise of statutory discretion or an unlawful attempt to override a congressional mandate.
The professors argue forcefully for the latter, contending that the policy violates the patent statute, undermines the core purpose of IPRs, and reflects the Acting Director’s personal disagreement with the law.
The amici assert that the policy is inconsistent with the AIA. Congress imposed specific time limits on IPR filings: a petitioner cannot file an IPR within the first nine months of a patent’s life (35 U.S.C. §311(c)(1)) and cannot file more than one year after being served with an infringement complaint (35 U.S.C. §315(b)). The brief argues that these explicit provisions demonstrate congressional intent and that “Those statutes do not leave room for the interim Director to create an entirely new time limit, particularly one that eliminates the overwhelming majority of petitions the statute permits” (p. 6).
The amici argue that the “settled expectations” doctrine eviscerates the very purpose of IPRs. The patent examination process is necessarily limited, and the IPR system was created with this in mind: “The entire purpose of the IPR procedure is to give the PTO an opportunity to review patents later in life once it has become clear that the validity of the patent is important” (p. 6). The Director’s policy turns this logic on its head by shielding older patents, which are disproportionately the ones asserted by patent assertion entities (PAEs), from this crucial second look.
Perhaps the most pointed argument is that the policy is a pretext for dismantling the IPR system. The brief highlights a recent speech by the Interim Director to demonstrate this point:
Imagine if your law license, your business license, your college degree, the title to your home or your ability to drive were constantly subjected to reconsideration by anyone at any time, year after year after year. . . . To have a stable economy we need a stable patent system. Repeated and expedited reconsideration of patent grants under the low preponderance of evidence standard is the antithesis of stability (p. 9, citing the Acting Director’s IPO meeting speech).
The amici contend this statement “reflects a flat-out rejection of the entire policy of IPRs as established in the America Invents Act” (p. 9). They argue that using discretionary authority to nullify a statute based on personal policy preferences is precisely the kind of agency action that warrants mandamus relief.
To the professors, “Rejecting meritorious petitions because you don’t personally like the law under which they are filed is just the sort of ‘shenanigans’ the Supreme Court and this Court have said should be reviewable” (p. 2).
They conclude this line of reasoning with the pointed remark: “‘Shenanigans’ indeed” (p. 10).
Practical Implications
The outcome of this petition will have significant consequences for patent owners and challengers alike. The Director’s policy, if upheld, solidifies a powerful defense against IPRs for any patent that is more than a few years old. This would be a welcome development for owners of established patent portfolios, providing greater certainty and insulating them from what some view as harassing administrative challenges.
For accused infringers and other patent challengers, the implications are stark. The primary avenue for efficiently challenging questionable patents would be closed off for a large swath of the patent landscape. This would force challengers back into the more costly and time-consuming arena of district court litigation, tilting the strategic balance heavily in favor of patent assertion entities that often acquire and assert patents late in their term.
Practitioners must advise clients of the current, uncertain state of affairs. While the “settled expectations” doctrine is the current policy at the USPTO, its legal foundation is under direct and serious attack at the Federal Circuit. Relying on this doctrine as a long-term strategic shield is a risky proposition, as a decision granting the writ of mandamus could eliminate it overnight.
Conclusion
The In re Sandisk petition is more than a dispute over a single agency policy; it is a battle over the future of the U.S. patent system’s post-grant review framework. It’s “patent trolls” versus “efficient infringers.”
As the amici state, “The issue is extremely important. The interim Director has issued hundreds of discretionary denials pursuant to an illegal policy” (p. 10). The petition and amici ask the Federal Circuit to decide whether the USPTO Director can use discretionary authority to fundamentally reshape a statutory scheme enacted by Congress.
While many might want to do away with director denials completely, eliminating the proverbial stopwatch in favor of other more-accepted factors might be a satisfactory result for many patent system stakeholders.
In any case, the appellate court’s decision could tip the balance of power between the executive branch and the legislature in patent matters and will likely reverberate through patent litigation and portfolio management strategies for years to come.
Stay tuned. This could be a prime battlefield for the White House to test some strength or just one of a multitude of courtroom clashes for IP and beyond.
Disclaimer: This is provided for informational purposes only and does not constitute legal or financial advice. To the extent there are any opinions in this article, they are the author’s alone and do not represent the beliefs of his firm or clients. The strategies expressed are purely speculation based on publicly available information. The information expressed is subject to change at any time and should be checked for completeness, accuracy and current applicability. For advice, consult a suitably licensed attorney and/or patent professional.