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Explore the latest in patent, trademark, and copyright cases on the Merchant & Gould LLP blog. Stay informed with expert insights on intellectual property law updates.

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Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in <a href="https://www.cafc.uscourts.gov/opinions-orders/25-134.ORDER.11-6-2025_2599490.pdf">In Re Motorola Solutions, Inc., No.  2024-134 (Nov. 6, 2025)</a>, on a petition for writ of mandamus to the United States Patent and Trademark Office concerning certain Inter Partes Review proceedings. The Federal Circuit denied Motorola’s petition challenging the USPTO Acting Director’s rescission of the June 2022 Vidal memorandum and subsequent de-institution of eight IPRs.  The Court held that institution decisions remain committed to agency discretion and insulated from judicial review, that the rescission did not violate due process because petitioners have no protected property interest in IPR, and that APA challenges to rulemaking must proceed—if at all—separately from institution review.

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The dispute arose from parallel district court litigation filed by Stellar, LLC and Motorola’s two waves of IPR petitions submitted in mid-2024, each accompanied by Sotera stipulations.&nbsp;&nbsp;The Patent Trial and Appeal Board initially instituted the IPRs, but Stellar sought Director Review.&nbsp;&nbsp;In early 2025, after the Acting Director rescinded the Vidal Memorandum and instructed the Board to treat Sotera stipulations as highly relevant but non-dispositive, the Director de-instituted both sets of IPRs, finding they would be an inefficient use of resources given the advanced civil action.&nbsp;&nbsp;Motorola moved for reconsideration and then sought mandamus.&nbsp;

In denying the petition, the Court emphasized that Congress committed IPR institution to the Director’s unreviewable discretion and made those determinations final and non-appealable. Against that backdrop, mandamus is “drastic” and ordinarily unavailable to revisit institution, including Fintiv-based discretionary denials.&nbsp;&nbsp;The Court rejected Motorola’s due process theory, explaining that neither interim guidance nor expectations about how factors will be weighed create a protected property interest in IPR or a right to have petitions considered without reference to parallel litigation.&nbsp;&nbsp;The Court also explained there was no unfair surprise: the Vidal Memorandum was expressly interim and subject to change, and its rescission did not bar Motorola from raising patentability defenses in district court.&nbsp;

On the APA, the Court reiterated that any notice-and-comment challenge to PTO policy must proceed apart from review of a specific institution decision.&nbsp;&nbsp;Attempting to vacate institution denials via mandamus would end-run the statutory bar.&nbsp;&nbsp;The Court also declined to second-guess the Director’s weighing of Fintiv factors as arbitrary and capricious; that is squarely within § 314(d)’s insulation.&nbsp;

CAFC Denies Mandamus Over USPTO Acting Director’s IPR De-Institution Decision

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