Following its February 28, 2025, rescission of former Director Vidal’s 2022 memorandum concerning discretionary denials, the United States Patent and Trademark Office (USPTO) began more frequently denying petitions for inter partes review (IPR) on non-merits grounds. Several aggrieved petitioners have sought appellate review of these discretionary denial decisions by filing petitions for writs of mandamus at the United States Court of Appeals for the Federal Circuit.
The Federal Circuit denied the three earliest such petitions on November 6, 2025, but those decisions do not address all of the issues raised in the remaining petitions. In particular, none of the November decisions address the USPTO’s new “settled expectations” factor, which it may apply to deny review where the patent-at-issue has been in force for many years, especially where the petitioner was aware of the patent.
On December 9, 2025, the Federal Circuit released another trio of decisions denying mandamus.
The Federal Circuit’s decisions in Cambridge Industries, SanDisk, and Highlevel
The Federal Circuit’s denials of mandamus, all nonprecedential, closely track its previous precedential decision in In re Motorola Solutions, Inc., No. 2025-134, 2025 WL 3096514 (Fed. Cir. Nov. 6, 2025). In the most detailed decision, In re Cambridge Industries, No. 26-101, the court held that Cambridge’s due process challenges to the use of the “settled expectations” factor, like Motorola’s earlier challenges, “fail to identify the kind of property rights or retroactivity concerns that might give rise to a colorable Due Process Clause claim.” Slip op. at 3-4. The court similarly echoed Motorola in rejecting Cambridge’s statutory and APA challenges, finding that its notice-and-comment claims could be brought in an Administrative Procedure Act (APA) action in district court, and that Cambridge had not shown its remaining claims to be reviewable. Id. at 4-5. The court also addressed Cambridge’s separation of powers argument — an issue not reached in the previous denials — holding that “‘claims simply alleging that the President has exceeded his statutory authority are not “constitutional” claims.’” Id. at 4 n.1 (quoting Dalton v. Specter, 511 U.S. 462, 473-74 (1994)). Although the court emphasized that it was not deciding whether the “settled expectations” factor was permissible under the statute, it concluded that Cambridge had not shown a clear and indisputable right to mandamus relief. Id. at 5-6.
In a two-page order, the court denied the mandamus petition in In re Sandisk Technologies, Inc., No. 25-152, finding that it raises the same issues as Cambridge.
The court also denied mandamus in In re Highlevel, Inc., No. 25-148, a case involving a less common issue — whether the USPTO can deny institution based on the challenged claims having already been held patent-ineligible under 35 U.S.C. § 101 in a parallel litigation. As in Motorola and Cambridge, the court held that Highlevel had not identified a sufficient property interest for a Due Process Clause claim and that its parallel statutory and APA challenges either presented unreviewable issues or could be raised in a district court APA suit. Slip op. at 3-4.
Aggrieved IPR petitioners continue to file mandamus petitions
Despite the headwinds created by the Federal Circuit’s denials thus far, parties have continued filing mandamus petitions to challenge the USPTO’s discretionary denials. The petitions currently pending are:
- In re Maplebear, Inc., No. 26-105 (challenging the “settled expectations” and “road mapping” considerations)
- In re Google LLC, No. 26-113 (challenging the “settled expectations” factor)
- In re Kangxi Communication Technologies Co., No. 26-115 (challenging the “settled expectations” factor and seeking to distinguish Motorola by relying on filing fees as the relevant “property” interest)
- In re Tesla, Inc., No. 26-116 (challenging the “time to trial” factor)
- In re Tessell, Inc. No. 26-117 (challenging discretionary denial based on assignor estoppel)
Many of these petitions post-date the precedential Motorola decision and thus seek to distinguish it, either by identifying a different property interest (as in Kangxi) or by arguing that the USPTO’s evolving practices more clearly demonstrate a violation of its statutory and/or constitutional authority. The Federal Circuit’s forthcoming decisions on these petitions should provide additional guidance regarding the reviewability of discretionary denial on mandamus.
Takeaways
These decisions further underscore the difficulty of challenging discretionary denials of IPR institution through petitions for writs of mandamus. Although creative petitioners have and likely will continue to pursue mandamus and distinguish the cases denying review thus far, the consistent denials of mandamus to date, as well as the USPTO’s ongoing rulemaking concerning IPR institution, could lead aggrieved parties to shift their focus to possible APA actions in district court. The court’s decision in Apple Inc. v. Squires, No. 24-1864 (Fed. Cir.), which has been scheduled oral argument for January 5, 2026, is expected to provide guidance on whether APA actions will be effective vehicles for challenging the USPTO’s policies.
