On November 6, 2025, the U.S. Court of Appeals for the Federal Circuit (Judges Dyk, Linn, Cunningham, and/or Stoll) issued orders denying three petitions for mandamus (out of seven currently pending) challenging then-Acting USPTO Director’s discretionary denials of institution of inter partes review (IPR). See In re Motorola, In re Google and Samsung; and In re SAP America.
Relevant here, on February 28, 2025, the Acting Director rescinded a previous 2022 Director memorandum relating to the Board’s precedential Fintiv decision. Fintiv provides factors the Board applies when determining whether to discretionarily deny institution of an IPR in view of co-pending, parallel litigation addressing the same invalidity issues. The 2022 memo had stated that the PTAB would not deny IPR petitions on Fintiv grounds if the petitioner submitted a “Sotera stipulation” not to pursue in a co-pending, parallel court proceeding the same grounds or any grounds that could have reasonably been raised in an IPR. As a result of the rescission, Sotera stipulations no longer definitively preclude institution denials under Fintiv.
The Motorola, Google, and SAP cases each involved IPR petitions filed before the 2022 memo’s rescission that—after the rescission—were discretionarily denied notwithstanding the petitioner’s submission of a Sotera stipulation. The petitioners requested mandamus, arguing that the USPTO’s policy changes regarding Sotera stipulations violated due process and the Administrative Procedure Act (APA).
The Federal Circuit denied relief. The court noted three criteria that must exist before the court will grant mandamus: (1) a “clear and indisputable” right to relief; (2) that petitioners “lack adequate alternative means to obtain the relief” they seek; and (3) that the “writ is appropriate under the circumstances.”
Regarding the due process allegations, the court held that, because the decision to institute is discretionary, the petitioners lacked any constitutionally protected interest in an institution decision made according to any particular set of criteria. And, while “[e]lementary considerations of fairness dictate that individuals should have an opportunity to know what the law is and to conform their conduct accordingly,” the court found that the petitioners “did not experience anything close to the kind of unfair surprise that might raise a due process violation.” Consistent with earlier holdings, the court held that petitioners’ APA claims were not cognizable on mandamus because (i) petitioners’ argument that the agency should have implemented policies relating to Fintiv through notice-and-comment rulemaking could be raised in a district court APA action and (ii) 35 U.S.C. § 314(d) ordinarily precludes review of individual denials of institution.
Four other petitions for mandamus remain pending at the Federal Circuit regarding recent discretionary denials of institution. These petitions similarly raise due process and APA violations, but also other challenges relating to additional new policies that have arisen since March 2025. These policies include denying institution based on “settled expectations” of a patent owner, such as those based on the age of the challenged patent.
Notably, a footnote in In re Motorola (n.2) states:
In the past, the Director has generally delegated the responsibility of deciding whether to institute IPR to the Board. See 37 C.F.R. § 42.4; Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1028 (Fed. Cir. 2016). 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.
Thus, it is worth keeping an eye on whether more recent decisions on institution, including those issued under the new process implemented by the Director in October 2025, will trigger additional petitions for mandamus or APA actions. Under the new process in place since October 20, 2025, the Director not only decides all decisions on institution himself, but plans to issue many such decisions in the form of “summary notices” that provide no analysis or reasoning for the decision.
We remain in a period of fast-paced changes and uncertainty related to decisions on institution in AIA proceedings.
