Precedential Federal Circuit Decision Reaffirms the Broad Scope of the PTAB’s Discretion to Deny Institution of IPRs

The Federal Circuit issued an important precedential decision in In re Motorola, No. 2025-134 (Nov. 6, 2025) that supports the U.S. Patent Officer Director’s ability to deny institution of petitions for inter partes review (“IPR”) on discretionary grounds.  The Acting Director had rescinded a prior guidance regarding the analysis for discretionary denial of IPRs, which Motorola challenged as a violation of the Administrative Procedure Act (“APA”) and its due-process rights. In confirming that the Director can retroactively rescind the guidance, the decision reaffirms that the USPTO Director has great discretion in deciding whether to institute or deny IPR petitions.

In August 2023, Stellar sued Motorola in district court alleging infringement of eight patents. In July and August 2024, Motorola filed IPRs petitions challenging all eight patents. The PTAB instituted all eight IPRs, and Stellar requested Director Review of those institutions. On March 28 and May 23, 2025, the Acting Director vacated the grant of institution of the IPRs, instead discretionarily denying institution.

Motorola then petitioned the Federal Circuit for mandamus relief, arguing that the Acting Director violated procedural protections guaranteed by the APA and violated Motorola’s right to due process. The Federal Circuit denied Motorola’s petition for mandamus.

Background: In June 2022, then-USPTO director, Katherine K. Vidal, issued a memorandum (“2022 Memo”) with interim guidance on how to apply the Fintiv factors[1] used by the PTAB to assess whether to discretionarily deny institution when there is parallel district court litigation. See 2022 Memo; Apple v. Fintiv, IPR2020-00019 (PTAB Mar. 20, 2020). The 2022 Memo states that the Board would not discretionarily deny institution in view of parallel litigation if a party filed a Sotera stipulation, i.e., a stipulation “not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the [Board].” 2022 Memo at 3.  The 2022 Memo was in effect when Motorola filed its IPR petitions in 2024, petitions which included Sotera stipulations.  In re Motorola, No. 2025-134 at 5.

On February 28, 2025, the Acting Director, Coke Morgan Stewart, rescinded the 2022 Memo. “USPTO rescinds memorandum addressing discretionary denial procedures” USPTO (Feb. 28, 2025). On March 24, 2025, Chief Administrative Patent Judge Scott Boalick issued further guidance to the Board on how to implement the recission (“March 2025 Guidance”), explaining that the recission applies to “any case in which the Board has not issued an institution decision, or where a request for Director Review of an institution decision was filed and remains pending,” that Sotera stipulations are highly relevant but not dispositive, and that the Board will consider timely requests for additional briefing on the application of the recission on a case-by-case basis. See March 2025 Guidance.

The Decisions Prompting Motorola’s Petition for Mandamus: Upon Stellar’s request for director review, the Acting Director vacated the first set of institutions and denied institution, reasoning that the Board underweighted the parties’ investment in the parallel district court litigation and overweighted the Sotera stipulations. Motorola Solutions Inc. v. Stellar, LLC, IPR2024-10205-08, at 2 (PTAB Mar 28, 2025) (Paper 19). The Acting Director reasoned that Motorola’s Sotera stipulations were not likely to moot Motorola’s district court arguments, which included the prior art combinations asserted in the IPR combined with unpublished system prior art. Id. at 3-4.

In a separate decision, the Acting Director vacated Motorola’s second set of petitions, and denied institution. Motorola Solutions Inc. v. Stellar, LLC, IPR2024-01284-85 and IPR2024-01313-14, at 1 (PTAB May 23, 2025) (Paper 17). The decision rejected Motorola’s argument that the Board improperly rescinded the 2022 Memo retroactively. Id. at 5-6. The Director reasoned that, consistent with the March 2025 Guidance, the institution decision was not final because the petitioner requested director review. Id. at 5.

The Mandamus Petition: Motorola sought mandamus regarding both decisions vacating institution and denying institution, arguing that the recission of the 2022 memo violated the APA and Motorola’s due process rights. To obtain such mandamus, “[t]he petitioner must show a ‘clear and indisputable’ right to relief … [and] must ‘lack adequate alternative means to obtain the relief’ it seeks.” In re Motorola, No. 2025-134 at 6 (Nov. 6, 2025).  The Federal Circuit found that Motorola did not make those showings and therefore denied Motorola’s petition for mandamus. Id. at 7. The Federal Circuit explained that “Congress committed institution decisions to the Director’s discretion.” Id. at 6, quoting SAS Inst., Inc. v. Iancu, 584 U.S. 357, 366 (2018). Thus, but for narrow exceptions, institution decisions are final and unappealable and generally are not subject to mandamus.

Motorola’s Due Process Arguments: Motorola argued that it had been denied due process because the 2022 Memo created a constitutionally protected interest in having its petitions considered without regard to Fintiv. The Federal Circuit disagreed, reasoning that the 2022 Memo did not direct the Board to reach a particular outcome on institution and therefore did not create a property interest under the due process clause. In re Motorola at 8. The Federal Circuit explained that the expectation of receiving a certain procedure does not confer a due process right, and Motorola was on notice that the 2022 Memo could be modified at any time. Id. at 9. Moreover, Motorola could still raise its invalidity defenses outside the PTAB. Id. at 9-10.

Motorola’s APA Violation Arguments: Regarding the APA violations, Motorola argued that mandamus is warranted because the PTO should have offered notice and comment of rulemaking before rescinding the 2022 Memo. In re Motorola, No. 2025-134  at 10. The Federal Circuit disagreed, reasoning that Motorola could have made this argument in federal district court and therefore the argument does not support mandamus. Id. The Federal Circuit also rejected Motorola’s argument that the Acting Director acted arbitrarily and capriciously by failing to give proper consideration to the reliance engendered by the 2022 Memo. Id. at 11. The Federal Circuit explained that such arguments are not reviewable as they merely challenge the Acting Director’s right to make decisions regarding discretionary denial. Id. 

Takeaway: This decision serves as a reminder that the PTAB, and particularly the Director, have broad discretion to make institution decisions, including discretionary denials. The decision also reinforces that this broad discretion is generally not reviewable.  See also In re Google LLC, No. 2025-144 (Fed. Cir. Nov. 6, 2025) (non-precedential) (denying mandamus petition based on same reasoning as in In re Motorola); In re SAP America, Inc., No. 2025-132 (Fed. Cir. Nov. 6, 2025) (non-precedential) (same).  Some practitioners may also find it ironic that the PTAB appears to have recently placed greater weight on the reliance interests and settled expectations of patent owners, but given little weight to the reliance interests and settled expectations of petitioners that have come to rely on USPTO guidance and procedures. This will continue to be an area of great interest.

[1] The Fintiv factors include: (1) “whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted”; (2) “proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision”; (3) “investment in the parallel proceeding by the court and the parties”; (4) “overlap between issues raised in the petition and in the parallel proceeding”; (5) “whether the petitioner and the defendant in the parallel proceeding are the same party”; and (6) “other circumstances that impact the Board’s exercise of discretion, including the merits.” 2020 WL 2126495 at *2.