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Federal Circuit Rejects Mandamus Petition Challenging Discretionary Denials
12/17/2025On November 6, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued a decision denying a petition for writ of mandamus relief from the discretionary deinstitution of inter partes reviews (“IPRs”). In re Motorola Sols., Inc., No. 2025-0134, F.4th ___ (Fed. Cir. Nov. 6, 2025). Motorola challenged the discretionary actions of the Acting Director of the PTO as violating the Administrative Procedures Act and the Due Process clause of the Fifth Amendment to the U.S. Constitution but the CAFC rejected both arguments and denied Motorola’s petition.
In August 2023, Stellar, LLC filed a suit in district court against Petitioner Motorola Solutions, Inc. (“Motorola”), alleging infringement of eight patents. Motorola filed two separate sets of petitions for IPR in July and August 2024. Motorola also filed a Sotera stipulation stating, “that should [the] IPR[s] be instituted it would not pursue, in the parallel civil litigation, any ground for unpatentability that it raised or reasonably could have raised in the IPRs.” Then-Director, Katherine Vidal, instituted both sets of IPRs, prompting Stellar to seek Director Review. In February 2025, following a change in Presidential administration and PTO Directorship, Acting Director Coke Morgan Stewart rescinded previous Director Vidal’s 2022 interim guidance to the Patent Trial and Appeal Board (“Board”) on how to apply the so-called Fintiv factors in determining institution, while the PTO explored potential rulemaking. In March 2025, Acting Director Stewart deinstituted one of Motorola’s two sets of IPRs based on the Fintiv factors, concluding that the “Board did not give enough weight to the investment in the parallel proceedings and gave too much weight to Petitioner’s Sotera stipulation.” In response to Motorola’s motion for reconsideration, Acting Director Stewart deinstituted the other set of IPRs, concluding that “it would be an inefficient use of agency resources given [that there is a parallel] civil action.”
Following Acting Director Stewart’s deinstitution decisions, Motorola petitioned the CAFC for mandamus relief, primarily arguing that: (1) Acting Director Stewart’s rescission of the Vidal Memorandum violated Motorola’s due process rights and (2) the rescission of the Vidal Memorandum violated the Administrative Procedure Act (“APA”). Motorola requested that the CAFC vacate Acting Director Stewart’s rescission of the Vidal Memorandum and reinstate the IPRs.
In its denial, the CAFC noted that the remedy of mandamus is a drastic one, to be invoked only in extraordinary situations, and since Congress committed institution decisions to the Director’s discretion, protecting it from judicial review, see 35 U.S.C. § 314(d), mandamus is ordinarily unavailable for review of institution decisions.
With respect to Motorola’s due process argument, the CAFC noted that Motorola’s request for relief was premised on the proposition that the Vidal Memorandum created a constitutionally protected interest in having Motorola’s petitions considered without regard to the discretionary Fintiv factors. The CAFC rejected that interest as a proper basis for Motorola’s due process claim, stating that Motorola did not claim any rights in IPR institution of the challenged patents, nor could it, because when “a statute leaves a benefit to the discretion of a government official, no protected property interest in that benefit can arise.” The CAFC noted that Motorola did not ask for additional process before deprivation of any of its purported protected interest. The CAFC stated that “[w]e similarly see no “history or tradition” that supports recognizing for these purposes a constitutionally protected right to have the Board consider Motorola’s petitions without regard to the Fintiv factors, even if it stipulates to not raising the challenges in parallel district court proceedings.”
In support of its APA claims, Motorola raised two arguments: 1) the rescission of the Vidal Memorandum effected a change in law or policy that required notice-and-comment rulemaking, and 2) Acting Director Stewart acted arbitrarily and capriciously in applying the recission by, among other things, failing to offer any reason for change and failing to give proper consideration of the reliance interests engendered by the Vidal Memorandum. The CAFC rejected these contentions stating that “these arguments are the kinds of arguments that [the CAFC] have said are not reviewable in light of § 314(d) because, at bottom, they challenge the Director’s exercise of [] discretion to deny institution (the weighing of the relevant factors) and thus do not fall within the limited category of non-constitutional challenges to the applicable factors appropriate to review on limited mandamus relief.”
