Federal Circuit Denies Another Mandamus Petition Challenging USPTO’s ‘Settled Expectations’ Doctrine

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday issued an order in In re Kahoot! AS, denying another petition for writ of mandamus that challenged the U.S. Patent and Trademark Office (USPTO) Director’s refusal to institute an inter partes review (IPR) petition based on “settled expectations” of the patent owner. The per curiam order was issued by Circuit Judges Taranto, Mayer, and Stark.

Kahoot! sought to challenge the Director’s decision to deny the institution of its IPR petition targeting a patent owned by Interstellar, Inc. for an “on-line academic competition” system. The Director’s denial reasoned that the patent had been in force for over six years, which created “strong settled expectations” for the patent owner. The Director also determined that an IPR would be an “inappropriate use of [Patent Trial and Appeal] Board resources under these circumstances.” This denial was part of the Director’s interim process for managing the Patent Trial and Appeal Board (PTAB) workload, which allows for discretionary denials based on factors such as the patent’s age.

The “settled expectations” doctrine came into play under then-Acting Director Coke Morgan Stewart, who explained that while there is no bright-line rule, “the longer the patent has been in force, the more settled expectations should be.” This approach has been compared to the six-year statute of limitations for recovering damages in patent infringement lawsuits. In the original denial of Kahoot’s petition, the Director found that six years was sufficient to establish the “strong settled expectations” that counseled against the institution.

In its mandamus petition to the CAFC, Kahoot! argued that this reliance on “settled expectations” exceeded the Director’s statutory authority. The court, however, found that Kahoot! had not met the high standard for mandamus relief, which requires a petitioner to show a “clear and indisputable right to the relief it seeks.”

The court underscored that Congress has committed IPR institution decisions to the Director’s discretion and has explicitly made those decisions “final and nonappealable” under 35 U.S.C. § 314(d). The order stated that, absent a colorable constitutional claim, which was not raised by Kahoot!, mandamus is “‘ordinarily unavailable’ for reviewing institution decisions.” The court concluded that arguments claiming the Director acted beyond her legal authority, or ultra vires, “cannot be a basis for granting the petition for mandamus.”

This decision marks the latest in a series of similar denials by the CAFC, which has consistently refused to second-guess the USPTO’s discretionary denials of IPR institutions. Including this case, the court has now denied at least 12 such mandamus petitions. The other denied petitions include challenges from Motorola, SAP, Google, Samsung, Inari, HighLevel, SanDisk, Cambridge, Intel and Lenovo, Kangxi, and Tessell. These petitions raised various issues, including settled expectations and Sotera stipulation guidance to denials based on parallel proceedings, assignor estoppel, and the availability of ex parte reexamination.