“Congress has long provided that a patent may be held invalid at any point during its term, including when the U.S. Patent and Trademark Office (PTO) determines that the patent should not have been issued in the first place—that is, that it never met the requirements for patentability. In the America Invents Act, Congress created inter partes review to enable third parties to petition the PTO to adjudicate the validity of, and potentially cancel, a patent.”
“The PTO recently announced that a patent owner acquires ‘settled expectations’ in a patent when that patent has been in force for six years—regardless of whether it is invalid—and, further, that such ‘settled expectations’ provide a justification for refusing to institute inter partes review and therefore refusing to adjudicate whether the patent is invalid.
“The questions presented are:”
1. “Whether the PTO lacks statutory authority to deny institution based on ‘settled expectations’ where the patent statutes allow for administrative review at any time during the life of a patent.” 2. “Whether courts have power to review a PTO decision denying inter partes review on grounds that are contrary to statute.”
