Last week, the Federal Circuit issued an order in In re Google LLC, a case we have been following because it attracted an amicus brief. In this case, Google filed a petition for a writ of mandamus seeking to vacate a decision by the Patent and Trademark Office denying its petitions for inter partes review and to require the agency to reconsider its petitions without relying on any “settled expectations” rule. In an order authored by Judge Wallach, the panel, consisting of Judges Lourie, Wallach, and Stoll, denied the petition. This is our summary of the order.
Judge Wallach first briefly outlined the factual and procedural background:
The United States Patent and Trademark Office (PTO) denied Google LLC’s petitions for inter partes review of VirtaMove, Corp.’s patent, reasoning the ‘patent[] ha[s] been in force for more than 14 years, creating strong settled expectations’ and Google had not shown review would be an appropriate use of PTO resources. . . . Google now seeks a writ of mandamus directing the PTO to vacate that decision and to reconsider its petitions for IPR without consideration of those ‘settled expectations.’ The Director of the PTO and VirtaMove oppose the petition.
Judge Wallach then explained that, “in recent decisions, this court considered and rejected similar challenges, by way of mandamus relief, to the PTO’s use of ‘settled expectations’ as a factor in denying institution of inter partes review.” The judge concluded that “Google has not shown a right to a different conclusion here.”
As a result of Judge Wallach’s analysis, the panel denied Google’s petition.