Federal Circuit Denies Mandamus in Second Wave of Mandamus Petitions Challenging Discretionary Denials of IPRs

In three nonprecedential orders issued on December 9, 2025, a single panel of the Federal Circuit (Judges Prost, Chen, and Hughes) denied petitions for mandamus challenging then Acting Director Coke Morgan Stewart’s discretionary denials of IPR petitions. These decisions follow the Federal Circuit’s November 6, 2025, precedential In re Motorola, No. 2025-134 (Nov. 6, 2025) order denying similar petitions for mandamus, which we previously examined.

Two of the December 9 orders involved cases in which then Acting Director Stewart discretionarily denied petitions under the “settled expectations” doctrine. See In re Cambridge Industries, No. 2026-101 (Dec. 9, 2025) (challenged patents in force seven and nine years); In re Sandisk Technologies, No. 2025-152 (Dec. 9, 2025) (challenged patents in force about nine and twelve years). The third December 9 order involved patents that the district court had adjudged invalid under Section 101, with then Acting Director Stewart discretionarily denying institution on grounds that the patents had already been found invalid under 35 U.S.C. § 101 by a district court: “the efficiency and integrity of the patent system is best served by denying institution.” See In re Highlevel, No. 2025-148 (Dec. 9, 2025).

As explained below, while the Federal Circuit has not foreclosed mandamus relief from discretionary denial of IPRs, the Federal Circuit has set a high bar for showing the clear and indisputable right to such relief given the limits on Federal Circuit review of decisions denying institution of IPRs. Nevertheless, more challenges, with new arguments, are already on their way to the Federal Circuit. See Tesla Petition for a Writ of Mandamus, 6 (arguing that mandamus is appropriate in view of, inter alia, the Board’s “overreach in applying extra-statutory excuses to avoid addressing IPR institution under the AIA’s statutory framework.”)

In re Cambridge / In re Sandisk / In re Highlevel: As explained above, these cases involved discretionary denials under the “settled expectations” doctrine. The Federal Circuit found that, like in In re Motorola, neither Cambridge nor Sandisk had identified a constitutional challenge with “the kind of property rights or retroactivity concerns that might give rise to a colorable Due Process Clause claim.” In re Cambridge at 3-4; In re Sandisk at 2. In denying mandamus, the Federal Circuit, citing Motorola, also found that Cambridge’s non-constitutional arguments failed because: (1) the argument based on the PTO’s failure to promulgate relevant considerations for institution through notice-and-comment rulemaking could have been raised in an APA action; and (2) Cambridge had not adequately demonstrated that reliance on settled expectations exceeds the PTO’s authority or is unreasonable. In re Cambridge at 4-5; see In re Sandisk at 2 (same reasoning regarding settled expectations). The Federal Circuit also noted that Cambridge’s arguments under the Administrative Procedure Act (“APA”) could have been brought at federal district court.

Regarding the “settled expectations” factor, the Federal Circuit expressly indicated the narrowness of its decision:

We reiterate that we do not decide whether the PTO’s actions are correct or whether the use of this factor is permitted under the statutes. Nor do we address the availability of mandamus relief for other challenges to institution decisions based on non-constitutional grounds. We decide only tat Cambridge has failed to show a clear and indisputable right to the relief requested given the limits on our review of the PTO’s decision to deny institution.

In re Cambridge at 5-6.

In re Highlevel: As explained above, this case involved discretionary denial after the district court adjudged the challenged patents invalid under Section 101. The Federal Circuit, however, relied on similar reasoning to reject Highlevel’s constitutional and non-constitutional challenges. In re Highlevel at 3-4.

In re Tesla Petition for Mandamus (“Tesla Petition”): On December 2, 2025, Tesla filed a petition for mandamus challenging then Acting Director Stewart’s discretionary denial of four IPR petitions because “it [was] unlikely that a final written decision in [the] proceeding [would] issue before the district court trial occur[ed].” Tesla Petition at 4. Tesla acknowledged the Federal Circuit’s prior denials of petitions for mandamus, such as In re Motorola, but argued that “none of those petitions squarely brought into question the statutory limits on the USPTO’s discretion” and that “§ 314(d)’s judicial-review bar does not excuse ‘shenanigans,’ including action ‘contrary to constitutional right,’ ‘in excess of statutory jurisdiction,’ or ‘arbitrary and capricious.’” Id. at 4-5, citing Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 275 (2016). Tesla further argued that “the USPTO’s overreach in applying extra-statutory excuses to avoid addressing IPR institution under the AIA’s statutory framework defines the very ‘shenanigans’ the Supreme Court has found reviewable notwithstanding § 314(d)’s appeal bar.” Id. at 6.

Takeaway: While the Federal Circuit has set a high bar for granting mandamus review, the Federal Circuit has neither ruled out such review nor ruled that the PTAB’s extra-statutory bases for discretionary denial are correct. This potentially leaves the door open for new avenues of attack, such as those raised in the Tesla Petition.