1. “Is the USPTO’s decision to deny Google’s petitions immune from judicial review where the decision—by the agency’s own admission—is not within the scope of 35 U.S.C. § 314(d) as interpreted by the Supreme Court?” 2. “Was the USPTO’s decision to deny Google’s petitions not in accordance with the law where the agency’s new ‘settled expectations’ rule is contrary to this Court’s Celgene decision?” 3. “Did the USPTO exceed its statutory authority—violating the APA and the Constitution’s separation of powers—by imposing an age-based limit on whether a patent is subject to IPR that is contrary to the statute?” 4. “Is the agency’s ‘settled expectations’ rule arbitrary and capricious where the rule relies on a factor—the challenged patent’s age—that Congress did not intend for the agency to consider?”
“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. . . . Google has not shown a right to a different conclusion here.”
