In re Google LLC
Panel: Lourie, Wallach, Stoll
The Federal Circuit denied Google LLC's petition for mandamus seeking to compel the USPTO to reconsider its denial of inter partes review petitions challenging a VirtaMove patent. The PTO had declined to institute IPR on the ground that the patent had been in force for more than 14 years, creating "strong settled expectations," and that Google had not shown review would be an appropriate use of agency resources. Google argued the PTO exceeded its authority by relying on settled expectations as a discretionary denial factor.
The court followed its recent precedent in In re Cambridge Industrial USA Inc. and In re Sandisk Technologies, Inc., both rejecting mandamus challenges to the PTO's use of "settled expectations" in denying institution. The court distinguished Google's reliance on Celgene Corp. v. Peter, explaining that Celgene addressed Takings Clause challenges to final written decisions invalidating patent claims rather than the scope of appellate review over denial-of-institution determinations under § 314(d). The decision reinforces the PTO's broad discretion in exercising its authority to deny institution based on factors beyond the merits of patentability challenges.