CAFC Denies Mandamus Petitions Seeking Reversal of New USPTO Policy on IPR Institution

The U.S. Court of Appeals for the Federal Circuit (CAFC) has denied three mandamus petitions asking the court to step in and curb the recently-implemented practice by which the U.S. Patent and Trademark Office (USPTO) Director decides whether to institute inter partes review (IPR) proceedings.

In the one precedential ruling in In Re Motorola Solutions, Inc., the CAFC—in an opinion authored by Judge Linn—rejected Motorola’s arguments that then-Acting USPTO Director Coke Morgan Stewart violated the Administrative Procedure Act (APA) and the Due Process clause of the Fifth Amendment to the Constitution by deinstituting eight IPR petitions it filed against claims of Stellar LLC’s patents.

PTAB Proceedings

In May, Stewart issued two orders, each resolving institution decisions for a series of four IPR petitions targeting Stellar’s patent claims. In one order, she granted Director Review, vacated the March 18 institutions of those IPR proceedings, and then denied institution to all four petitions. In the other order, Stewart denied Motorola Solutions’ request for rehearing of Director Review decisions to vacate four other IPR proceedings instituted on the same date and ultimately deny institution to those petitions.

Motorola appealed to the CAFC, challenging the recission of former USPTO Director Kathi Vidal’s 2022 interim procedure memo on the Fintiv discretionary denial factors, also known as the “compelling merits” memo, and application of that recission under the APA. Motorola also said the application of the recission violated its due process rights and asked the CAFC to “direct the PTO to vacate the Acting Director’s rescission of the Vidal Memorandum and to reinstate the Board’s institution of its petitions in accordance with that guidance.”

Mandamus Relief Not Warranted

The opinion began by noting that mandamus relief is not ordinarily available for decisions on institution because “Congress committed institution decisions to the Director’s discretion, SAS Inst., Inc. v. Iancu, 584 U.S. 357, 366 (2018), and protected that exercise of discretion from judicial review by making such determinations ‘final and nonappealable.’” While the CAFC has carved out exceptions for “colorable constitutional claims,” Motorola presented no such claims here, said the court.

Motorola’s request for mandamus relief was based on its argument that “the Vidal Memorandum imposed ‘substantive limits’ on the PTO’s ‘official discretion’ to deny an IPR petition based on the existence of parallel litigation so long as a petitioner provides a Sotera stipulation…,” said the decision. But CAFC precedent distinguishes between “applications for discretionary benefits and those for non-discretionary benefits in which a particular outcome is mandated ‘upon a showing that [the applicant] meets the eligibility requirements set forth in the governing statutes and regulations,’” wrote the court.

Since the Vidal Memo did not mandate an outcome on petitions and instead merely directed the Board to rely on certain criteria in its decision-making, it did not meet the criteria for a property interest protected by the Due Process clause.

Secondly, Motorola failed to show that it even has a property right that is protected under the due process Clause, said the opinion. The court pointed to Mylan Lab’ys Ltd. v. Janssen Pharmaceutica, N.V., 989 F.3d 1375, 1382 (Fed. Cir. 2021), where it rejected a similar argument, and added that “[w]e similarly see no ‘history or tradition’ that supports recognizing for these purposes a constitutionally protected right to have the Board consider Motorola’s petitions without regard to the Fintiv factors, even if it stipulates to not raising the challenges in parallel district court proceedings.”

With respect to Stewart’s application of the recission of the Vidal Memo to the petitions, the court was not convinced that there was any Due Process violation as outlined in Landgraf v. USI Film Prods., 511 U.S. 244, 265 (1994).

“[E]ven if those principles are applicable to this context, Motorola did not experience anything close to the kind of unfair surprise that might raise a due process violation,” wrote the court. The decision explained:

“Motorola was aware of the Board precedent on discretionary denial when it filed its petitions and on notice that the interim guidance about how to apply that precedent in cases where a party provides a Sotera stipulation could be modified at any time. Even if Motorola relied on the Vidal Memorandum when it undertook the expense of filing the petitions…that ‘reliance alone is insufficient to establish a constitutional violation.’”

As to Motorola’s APA challenge, the court rejected the argument that Stewart’s recission of the Vidal Memo required notice-and-comment rulemaking, noting that Motorola can raise that challenge in federal district court, and said the argument is also foreclosed by Mylan. Lastly, the court rejected Motorola’s contention that the Acting Director’s actions were arbitrary and capricious in that she failed to “offer any reasons for the change” or give sufficient consideration to the reasons the Vidal Memo was issued in the first place. “[T]hese arguments are the kinds of arguments that we have said are not reviewable in light of § 314(d) because, at bottom, they challenge ‘the Director’s exercise of [] discretion to deny institution’ (the weighing of the relevant factors)…and thus do not fall within the limited category of non-constitutional challenges to the applicable factors appropriate to review on limited mandamus relief,” said the court.

Two other mandamus petitions, In re Google LLC and In Re SAP America, Inc., were also denied today for similar reasons.

More to Come on the New Admin’s Approach

While this is the first round of mandamus decisions regarding the Squires’ USPTO’s policies on America Invents Act trial institutions, these are not the petitions the patent community has been most anxiously awaiting, said Scott McKeown of Wolf Greenfield:

“This first wave of mandamus denials was not unexpected given the court’s previous reviews of Fintiv-related discretionary issues. The court isn’t blessing the PTAB’s new practices, it just explains that APA suits are the proper way to raise such challenges. The PTAB’s so-called settled expectation reasoning was always the more interesting mandamus issue; those petitions remain pending.”

In one of those pending petitions, the former USPTO Director herself, Kathi Vidal, filed an amicus brief on behalf of the Public Interest Patent Law Institute (PIPLI), urging the court to set aside the “settled expectations” rule.

A Potentially Skeptical Footnote?

IPWatchdog’s Founder and CEO Gene Quinn also weighed in on the decisions today, noting that the CAFC’s footnote 2 in the Motorola decision “does make it sound like the CAFC is suspicious of Squires deciding institution without changing 42.4(a), which says ‘The Board institutes the trial on behalf of the Director.’”

Footnote 2 reads in part:

“In the past, the Director has generally delegated the responsibility of deciding whether to institute IPR to the Board….On October 17, 2025, however, the Director announced—without any change to 37 C.F.R. § 42.4—that he, in consultation with at least three Board judges, will determine whether to institute IPR….”

Quinn said that while there is likely an easy fix to that potential conflict, it will probably end up the subject of additional litigation. “I don’t see any reason why he couldn’t hand pick the members of the Board who are in charge of instituting trials, which is what I’ve always advocated for,” Quinn said.

He added:

“Squires has final review because of Oil States and the statute, and he could create a panel or two at the Board who are solely responsible for deciding institution and then assign a different panel for merits when instituted.

Regardless, the idea that the new Administration can’t revoke a memo by the previous Director without rulemaking seems like a bizarre argument. The Vidal memo doesn’t constitute rulemaking, so why shouldn’t Squires be able to rescind it and issue his own new memo? Of course, this isn’t a practical way to govern, but it is precisely what happens throughout government whenever a new Administration—and particularly a new party—assumes power and the prior Administration did not go through the effort to engage in rulemaking that would be binding on the Office until changed by new rulemaking or declared inappropriate by a court.”