Federal Circuit Denies Mandamus Petitions Challenging New Patent Office Discretionary Denial Scheme

As Honigman previously reported, in March 2025 the U.S. Patent and Trademark Office adopted new “interim processes” for deciding discretionary issues in Patent Trial and Appeal Board institution decisions. The new process bifurcated institution decisions into two phases: (i) review of discretionary considerations by the Director, and if the Director does not deny institution, (ii) merits and other non-discretionary considerations, as determined by a three-member panel of the PTAB.  Before this change, discretionary and merit-based considerations were evaluated at the same time by a three-member panel of PTAB judges in their institution decisions. 

Beginning in June 2025, several parties filed legal challenges to the new bifurcated process by way of mandamus petitions to the U.S. Court of Appeals for the Federal Circuit.  At the time of this alert, seven petitions had been filed challenging the implementation or application of this new system.[1]   

On November 6, 2025, the U.S. Court of Appeals for the Federal Circuit denied the first three of these petitions in short decisions. Only one, In re Motorola, was designated precedential. 

In Motorola, the PTAB had originally instituted inter partes review of the challenged patents.  But after the bifurcated system was announced, then-Acting Director Stewart deinstituted the IPRs after finding that they would not be an efficient use of resources in view of parallel district court litigation.  In re Motorola, No. 25-134, slip op. at *2 (Fed. Cir. Nov. 6, 2025).  Motorola sought mandamus relief from the Federal Circuit, raising claims under the Administrative Procedure Act (“APA”) and the Due Process Clause, all of which were rejected by the Court’s November 6 decision.

The Federal Circuit rejected Motorola’s Due Process claim for two primary reasons. First, it concluded that Motorola did not have a “constitutionally protected right” to have the PTAB consider its petitions on the merits without regard to the parallel district court litigation,[2] even in view of the prior so-called Vidal Memorandum. Id., slip op. at *8. Second, it found that the Acting Director’s recission of the Vidal Memorandum did not rise to the “kind of unfair surprise” that might raise a due process violation, because Motorola was aware of the prior Board precedent when it filed its petitions, and was also aware that precedent and the Vidal Memorandum could be modified at any time.  Id., slip op. at *9-10.  Moreover, the Court noted that Motorola can still raise its invalidity and patentability defenses elsewhere.  Id.

The Court also disposed of Motorola’s two APA arguments in short order.  It first noted that Motorola could raise the same APA challenge in an independent district court action, and that the statutory language and other precedent foreclosed appellate review of the Board’s institution decision. Id., slip op. at *10. It likewise said that Motorola’s “arbitrary and capricious” argument was not reviewable in light of 35 U.S.C. § 314(d), since it was essentially a challenge to the Director’s discretion.  Id., slip op. at *11. Accordingly, the Court denied Motorola’s petition.

In the other two decisions decided on November 6, the Court found that “mandamus is ordinarily unavailable for review of institution decisions” where Congress committed these decisions “to the Director’s discretion…and protected that exercise of discretion from judicial review by making such determinations ‘final and nonappealable.’”  In re Google, No. 2025-144, slip op. at *3 (Fed. Cir. Nov. 6, 2025) (citing SAS Inst., Inc. v. Iancu, 584 U.S. 357, 366 (2018)) and quoting 35 U.S.C. § 314(d)); see also In re SAP America, Inc., Nos. 2025-132, 2025-133, slip op. at *3 (Fed. Cir. Nov. 6, 2025) (same).  The Court then referenced its Motorola decision to reject similar due process and APA-based arguments made by Google and SAP, respectively.  In re Google, No. 2025-144, slip op. at *4; In re SAP, Nos. 2025-132, 2025-133, slip op. at *3.

Honigman continues to closely monitor all activities and announcements from the USPTO. If you have questions about the Federal Circuit’s decisions, the current status of PTAB practice, or other changes at the USPTO, please contact one of Honigman’s Intellectual Property Attorneys.

[1] In re SAP America, Inc., Nos. 2025-132, 2025-133 (Fed. Cir. Jun. 16, 2025); In re Motorola Solutions, Inc., Nos. 2025-134 (Fed. Cir. Jun. 23, 2025); In re Google LLC, No. 2025-144 (Fed. Cir. Aug. 18, 2025); In re HighLevel, Inc., No. 2025-148 (Fed. Cir. Aug. 29, 2025); In re SanDisk Technologies, Inc., No. 2025-152 (Fed. Cir. Sept. 18, 2025); In re Cambridge Industries USA Inc., No. 2026-101 (Fed. Cir. Oct. 10, 2025); In re Maplebear Inc., No. 2026-105 (Fed. Cir. Oct. 22, 2025).

[2] Otherwise known as the Fintiv factors.