CAFC Shoots Down Three More Mandamus Petitions Seeking to Curb USPTO Denial of IPR Institution

The U.S. Court of Appeal for the Federal Circuit (CAFC) on Tuesday issued three orders denying mandamus petitions filed by inter partes review (IPR) petitioners at the Patent Trial and Appeal Board (PTAB). Each of the petitioners was seeking relief from the court to compel the U.S. Patent and Trademark Office (USPTO) to institute their IPR petitions, following decisions that denied institution of the IPRs.

Tessell, Inc.; Kangxi Communication Technologies; and Intel Corporation/ Lenovo each filed petitions for writ of mandamus asking the CAFC to overturn the USPTO Director’s decisions denying their petitions for IPR. In line with similar decisions issued so far, the CAFC denied all three, finding they did not meet the “demanding” standard for mandamus relief.

In In re Tessell, Inc., then-Acting USPTO Director Coke Morgan Stewart granted discretionary denial due to “unfair dealings,” where former employees who left to start their own company were denied the ability to challenge the patent that they were awarded. “It is not an appropriate use of Office resources where the inventors applied for and were issued a patent, but, as is the case here, now advocate for its unpatentability,” the decision said.

The CAFC rejected Tessell’s argument in the mandamus petition that “the PTO exceeded its authority under 35 U.S.C. § 311(a), which provides, in relevant part, that ‘a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent.’” The court distinguished Arista Networks, Inc. v. Cisco Systems, Inc., 908 F.3d 792, 804 (Fed. Cir. 2018)—in which the CAFC “rejected an interpretation of § 311(a) that would bar an assignor from filing a petition for IPR”—from Tessell’s case because Arista involved an appeal from a final written decision, not a discretionary denial of institution. Further, decisions on institution are generally not reviewable and therefore Tessell had failed to show a clear right to relief.

Tessell also argued that the USPTO violated the Due Process Clause “because the Director’s prior designation of the PTAB’s decision in Athena Automation Ltd. v. Husky Injection Molding Systems Ltd., No. IPR2013-00290 (P.T.A.B. Oct. 25, 2013), as precedential placed a substantive limitation on the Acting Director’s discretion.” However, in a previous denial of mandamus, Motorola Solutions, Inc., 159 F.4th 30 (Fed. Cir. 2025), “where the petitioner was similarly claiming a property interest in rescinded Director guidance binding on only the Board for its exercise of delegated non-institution authority,” the CAFC rejected a similar argument, noting that “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.’”

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.

“Like the Director’s prior interim guidance in Motorola, here the Director’s direction to the Board in the form of a precedential Board decision to govern later Board decisions does not require the PTO to reach any particular outcome on a petition or otherwise create a cognizable property interest in IPR review that might conceivably give rise to a colorable due process claim,” wrote the CAFC in response to Tessell’s Due Process argument.

In Kangxi Communication Technologies (KCT), the CAFC declined to intervene where the guidance on IPR institution changed between the filing of the IPRs and the decision on institution. Specifically, the PTAB declined to institute due to both the existence of a parallel International Trade commission (ITC) proceeding where a decision was likely to issue before the IPR decisions and because the patents at issue had been in force for more than seven years, creating “strong settled expectations.” KCT asked the CAFC to vacate the denial of institution and to mandate the IPRs be reconsidered under the guidance in force at the time its petitions were filed, and also asked the court to strike down the “settled expectations” doctrine in its entirety.

The CAFC pointed to its previous decisions in In Re Cambridge Industries USA Inc. and In Re Sandisk Technologies, Western Digital Technologies, Inc. where it rejected requests to strike down the settled expectations rule and said it saw no reason to depart from those. The court also rejected KCT’s argument that it should grant mandamus directing the Office to return its filing fees due to the USPTO’s decision not to follow the guidance in place at the time it filed its petitions. “KCT has failed to show a clear right to a refund of any filing fees or that our intervention by way of mandamus relief is the only means by which to obtain such relief,” wrote the court.

Finally, a per curiam opinion of the same panel that decided In re Tessell declined to grant mandamus relief where Intel and Lenovo argued the USPTO “exceeded its authority by denying IPR ‘merely because [ex parte reexamination] EPR exists as an alternative’ to challenge the patent claims.” According to the CAFC, “that is not a fair characterization of the PTO’s rationale for denying institution in this case” because the Office did not foreclose access to IPR, but merely determined that EPR “rather than IPR, would be the most efficient use of resources here because of the examiner’s greater familiarity with the underlying issues.”

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