Nov. 6, 2025

In three nonprecedential orders issued today, the U.S. Court of Appeals for the Federal Circuit denied mandamus relief for petitioners challenging the Patent Trial and Appeal Board’s (PTAB) discretionary denials of inter partes review (IPR) petitions. These decisions—arising from parallel district court litigation and the recent rescission of interim guidance on IPR institution—underscore the Federal Circuit’s reluctance to second-guess the U.S. Patent and Trademark Office’s (PTO) discretion under 35 U.S.C. § 314(d). All three orders were authored by Circuit Judge Richard Linn and emphasize the high bar for mandamus, rooted in Supreme Court precedents like Cheney v. U.S. Dist. Ct. for D.C. and Kerr v. U.S. Dist. Ct. for N. Dist. of Cal.

As summarized in my earlier post, each case has its own procedural nuances and each relates to reliance on prior guidance set forth by the PTAB.

Case 1: In re Motorola Solutions, Inc., No. 2025-134, Panel: Circuit Judges Dyk, Linn, and Cunningham.

Motorola petitioned for eight IPRs challenging Stellar, LLC’s patents, which the PTAB initially instituted at Motorola’s request. However, the Acting Director later “deinstituted” them, applying Fintiv factors to deem IPR inefficient amid parallel district court proceedings. Motorola argued the deinstitution violated APA procedural requirements (e.g., notice-and-comment for policy changes) and due process, especially given its reliance on the interim guidance in filing.

The Federal Circuit’s order mirrors the two others issued today in denying mandamus. It traces the statutory backdrop of IPR discretion (citing Apple Inc. v. Vidal, 63 F.4th 1 (Fed. Cir. 2023)) and the Fintiv framework’s evolution. Motorola argued that the rescission was procedurally improper; however, the court held the interim guidance created no enforceable property right, reliance damages from filing fees didn’t rise to a due process violation, and APA challenges (e.g., lack of rulemaking or arbitrary retroactivity) weren’t “cognizable statutory challenges” warranting mandamus (citing SAS Inst., Inc. v. Iancu, 584 U.S. 357 (2018)).  The court left open the possibility of an APA action, but dismissed mandamus based on the deinstitution. The decision serves as the analytical anchor for the SAP and Google orders, explicitly cited therein.

Case 2: In re SAP America, Inc., No. 2025-132, 2025-133, Panel: Circuit Judges Dyk, Linn, and Cunningham.

SAP America petitioned for IPRs (Nos. IPR2024-01495 and IPR2024-01496) challenging patents owned by Cyandia, Inc., based on prior art from IBM’s WebSphere product. The PTAB denied institution in April 2025, noting inefficiency due to ongoing district court infringement litigation where trial was scheduled to precede the IPR’s final written decision (“FWD”) deadline. This denial came after the Acting Director rescinded interim guidance (issued in 2024) that had instructed the PTAB not to deny institution where petitioners stipulated against pursuing overlapping invalidity grounds in parallel proceedings (a “Sotera stipulation”). SAP had submitted a Sotera stipulation but argued, among other things, the rescission violated due process and the Administrative Procedure Act (APA).

The Federal Circuit denied mandamus, reiterating that IPR institution decisions are “final and nonappealable” under § 314(d), leaving little room for judicial review except in cases of “colorable constitutional claims” or specific statutory challenges (citing Mylan Labs. Ltd. v. Janssen Pharmaceutica, N.V., 989 F.3d 1375 (Fed. Cir. 2021)). SAP’s due process challenges were deemed waived for not being raised before the agency (citing In re DBC, 545 F.3d 1373 (Fed. Cir. 2008)). The court also cross-referenced its simultaneous decision in In re Motorola Solutions, Inc. (No. 2025-134) as foreclosing relief on the rescission issue.

Case 3: In re Google LLC, No. 2025-144, Panel: Circuit Judges Dyk, Linn, and Stoll.

Google LLC and Samsung Electronics Co. (collectively, the petitioners) jointly sought IPRs (Nos. IPR2024-01464 and IPR2024-01465) on patents asserted by Cerence Operating Company in a 2023 district court suit. The petitions targeted invalidity grounds involving Apple’s Siri and Samsung’s S Voice systems combined with prior art. Samsung provided a Sotera stipulation mirroring the rescinded guidance, promising not to pursue those grounds in litigation. The PTAB denied institution in April 2025, weighing factors from precedential decisions like Apple v. Fintiv (IPR2020-00019)—in particular, the district court’s trial date (seven months before the IPR deadline) and overlap in issues, including combinations of systems already at play in the litigation.

Petitioners sought mandamus, alleging due process and APA violations from the guidance’s rescission, plus a separation-of-powers claim that the PTAB overreached by effectively demanding waivers beyond statutory estoppel limits under § 315(e). The Federal Circuit rejected these arguments, again invoking the unreviewability of institution decisions and mandamus prerequisites (clear right to relief, no alternative means, and discretionary appropriateness). It explicitly relied on Motorola (No. 2025-134) to dispatch the due process and APA arguments, finding no protected property interest in the interim guidance and deeming retroactive application non-arbitrary. The separation-of-powers claim was characterized as a routine efficiency balancing act under PTAB discretion, not a constitutional overreach. A footnote addressed Google’s side argument—that it would have petitioned separately absent the guidance—dismissing it as unpreserved before the agency.

A Unified Front on Deference and the Rescission’s Fallout

These orders all deny relief under the same mandamus framework and authored by Judge Linn on the same day. Shared elements include:

• Unreviewability of Discretion: Each decision drives home § 314(d)’s bar on appeals, limiting mandamus to rare constitutional or statutory bases.
• Interim Guidance Rescission: The 2025 rescission of the 2024 guidance (which favored institution with Sotera stipulations) is uniformly upheld as non-violative. No due process “trap for the unwary” from reliance, and APA claims are sidelined as outside mandamus’s purview.
• Efficiency Overlap Emphasis: PTAB’s Fintiv-style balancing—factoring trial timelines, issue overlap, and stipulation limits—is portrayed as textbook discretion, not abuse.
• Waiver and Preservation: Arguments not raised agency-side (e.g., Google’s severance request) are routinely dismissed.

Nuances in Argument and in Application

While similar, the cases aren’t carbon copies:

• Deinstitution vs. Non-Institution: Motorola uniquely involves post-institution deinstitution, adding a layer of surprise but not altering the outcome—discretion cuts both ways.
• Stipulation Scrutiny: SAP and Google highlight PTAB’s skepticism of stipulations’ “limited practical effect” (e.g., not barring physical-system defenses), while Motorola focuses more on the guidance’s non-binding nature.

Takeaways

In summary, barring any successful petitions for certiorari and pending the outcome of other ongoing challenges, these rulings support PTAB’s litigation-management tools post-2025 leadership changes. Petitioners considering IPRs should brace for stricter scrutiny of petitions and that some patent challenges will be shifting back into district court. Patent litigators will likely remind clients that any actions taken in light of agency guidance may be subject to change. And patent owners and patent prosecutors will appreciate that the relentless focus on patent quality remains the best way to avoid patent litigation in the first place.