Big Tech Argues Admin Law Is Only Way to Check Patent Office (1)

Apple Inc. and other Big Tech companies urged the Federal Circuit to rein in actions by US Patent and Trademark Office leaders who’ve scaled back the ability of companies to challenge the validity of patents.

The tech titans took aim during oral argument Monday at a set of criteria—imposed during the first Trump administration and revived and expanded in the second—that’s led to fewer cases being taken up by the Patent Trial and Appeal Board. The companies contend the agency’s use of such factors violates Administrative Procedure Act because they weren’t adopted through a formal rulemaking process.

The APA is the “only check left and the only thing holding the agency accountable,” Mark Fleming of WilmerHale, who represents the tech companies, told the US Court of Appeals for the Federal Circuit.

Tech companies have long seen the PTAB as a bulwark against frivolous patent lawsuits, while inventors’ groups have viewed it with skepticism or outright hostility due to its role in canceling patents. Trump administration PTO directors in 2020 and 2025 built a framework to turn away validity challenges before reaching their merits, based on factors set out in PTAB decisions they’ve designated as precedential and in guidance memos.

The PTO argued that the “Fintiv factors"—named after a March 2020 PTAB precedent—aren’t of the sort that require rulemaking, in part because they don’t bind agency heads, and Director John Squires maintains the power to reverse a PTAB ruling. Squires last year took over deciding whether to take up or reject the validity proceedings, called inter partes reviews, a process previously run by the board’s patent judges going back to the tribunal’s creation in 2012.

Judge Raymond T. Chen questioned the government on the point, asking if the court should give weight to the director’s role if he rarely ever or never overrules a board institution decision in practice, such that “these factors really do hardwire outcomes.”

“The director is the ultimate decision maker for the agency,” said US Justice Department lawyer Weili Shaw, who’s representing Squires. He emphasized the legal significance and availability of an additional layer of administrative review by the director.

“The agency is not bound” by the Fintiv factors because “the director is not bound, he said.

The case is on its second appeal to the Federal Circuit, and has moved at a plodding pace since it was filed in the waning months of the first Trump administration in the US District Court for the Northern District of California.

Patent suit defendants have also brought more than a dozen mandamus petitions at the specialized appeals court to challenge the IPR denial process that’s expanded on the Fintiv factors. The Federal Circuit has dismissed about half of those case and has yet to side with a mandamus challenger.

Mootness

The three-judge panel asked Fleming and Shaw if the dispute was of reduced or no significance due to another recent Squires initiative—a notice of proposed rulemaking that would codify several factors through which the PTAB or the director could reject IPR petitions. Those factors would overlap with and go beyond the Fintiv factors.

Chen and Judge Richard G. Taranto pressed Shaw on whether the case might become moot if the rulemaking is finalized.

Taranto specifically asked if the Fintiv factors are fully captured in the proposed rule. Shaw answered, “There is substantial overlap” but the rule’s language leaves it unclear if that overlap is complete.

When it became clear that Shaw wasn’t in a position predict when the rule would become final, Chen noted that the agency might have an incentive to move quickly.

“You’re in a bit of a race, you see,” he said.

The Federal Circuit’s judges don’t relish laboring over an opinion that could quickly become moot, Chen said, but he seemed to indicate the panel had little choice but to press forward.

In recent months, the court has taken closer to four months on average after oral arguments in patent cases to issue precedential opinions, and about two months to issue nonprecedential ones, according to the Federal Circuitry blog maintained by lawyers at Morrison & Foerster.

Chen hinted that the opinion in the dispute wouldn’t be a simple or quick one to decide: “I don’t think we can get it out in a matter of days or weeks,” he said.

Alan D. Lourie also sat on the panel.

Cisco Systems Inc. and Intel Corp. are also represented by WilmerHale. Perkins Coie represents Google LLC, another co-appellant. The PTO Solicitor General’s Office also represents the agency’s director.

The case is Apple Inc. v. Squires, Fed. Cir., 24-1864, oral argument 1/5/26.