Kahoot! AS v. Interstellar Inc., et al.

Under the America Invents Act (the “AIA”), Congress created a framework for enabling third parties to petition the U.S. Patent and Trademark Office (the “PTO”) to reconsider whether previously issued patents should have been granted. Congress provided that post-grant review (or PGR) is available for patents within the first nine months after the patent is granted, and inter partes review (or IPR) for any patent that has been in existence for at least nine months (or, in the case where a patent is already subject to a PGR, after the termination of such review). 35 U.S.C. § 311(c). Congress otherwise imposed no limit for inter partes reviews based on a patent’s age. Recently, however, the PTO has instituted a policy of presuming that when a patent has been in force for an arbitrary period of six years, the patent owner has acquired “settled expectations” in that patent. And the PTO announced that it may, in the exercise of its discretion, refuse to institute inter partes review based solely on such “settled expectations,” without any consideration of the merits. In this case, the PTO denied Petitioner Kahoot! AS’s (“Kahoot!’s”) inter partes review petition on the grounds that the challenged patent had been in force for “over six years, creating strong settled expectations.” The PTO did so even though the patent had been in force for less than six years at the time the inter partes review petition was filed. The U.S. Court of Appeals for the Federal Circuit then denied mandamus, holding that Kahoot!’s statutory challenge to the PTO’s decision was unreviewable. The questions presented are:

1. Whether the PTO lacks statutory authority to deny inter partes review -iiinstitution based on “settled expectations” premised on a patent’s age where Congress prescribed express timing limits for inter partes review based on a patent’s minimum age (which is tied to the expiration of the statutory period for seeking post-grant review, a separate type of patent validity challenge) but imposed no maximum patent age bar.

2. Whether 35 U.S.C. § 314(d) bars judicial review, even by way of mandamus, of whether the PTO exceeded its statutory authority when denying inter partes review institution on grounds that are contrary to the statute.