Federal Circuit Denies All Mandamus Petitions Challenging Discretionary Denial Policies

Since the United States Patent and Trademark Office (USPTO) rescinded former Director Vidal’s 2022 memorandum concerning discretionary denials under the Fintiv framework (Vidal Memo) in Patent Trial and Appeal Board (PTAB) proceedings and implemented new guidance in the March 26, 2025 Interim Processes for PTAB Workload Management (2025 Interim Memo), discretionary denials have increased significantly. The USPTO’s recent notice of proposed rulemaking to codify aspects of the discretionary denial framework and Memorandum Regarding Director Institution of AIA Trial Proceedings underscores the agency’s commitment to these changed policies.

Because the America Invents Act (AIA) states that institution decisions in post-grant proceedings are “final and nonappealable,” 35 U.S.C. § 314(d), the effects of this change in USPTO policy are insulated from ordinary appellate review. Nevertheless, aggrieved petitioners have filed petitions for writs of mandamus at the United States Court of Appeals for the Federal Circuit asking the court to overturn various aspects of the USPTO’s new approach to discretionary denials.

On November 6, 2025, the Federal Circuit released a first batch of decisions denying three of the pending mandamus petitions; a second batch of mandamus denials on December 9, 2025; a third batch of mandamus denials on February 24, 25, and 27, 2026; and a denial of the last pending petition on March 19, 2025.

The November decisions (Motorola, SAP, and Google)

The most detailed decision to date, In re Motorola Solutions, Inc., No. 25-134, is designated precedential. Motorola had argued that it was deprived of due process by retroactive application of the February 28, 2025, recission of the Vidal Memo concerning discretionary denials, but the court found no due process violation because (1) the benefit of inter partes review (IPR) is left “‘to the discretion of a government official’” so that “no protected property interest in that benefit can arise,’” Slip op. at 7 (quoting Bloch v. Powell, 348 F.3d 1060, 1069 (D.C. Cir. 2003)), and (2) Motorola did not “ask for additional process,” id.

The court also rejected the argument that the Vidal Memo constrained the Board’s discretion sufficiently to give rise to a property interest, id. at 8, and found that Motorola’s alleged property interest was rooted in its “own unilateral expectation” as opposed to “any separate property interest,” id. at 9. Regarding Motorola’s arguments about the retroactive application of the recission, the opinion reasons that Motorola “did not experience anything close to the kind of unfair surprise that might raise a due process violation” because Motorola knew of the Fintiv precedent and was “on notice that the interim guidance” of the Vidal Memo “could be modified at any time.” Id. “Moreover, recission of the interim guidance did not affect Motorola’s ability to properly raise its patentability defenses elsewhere[,]” such as in a district court action. Id. at 10.

The court also rejected Motorola’s Administrative Procedure Act (APA) arguments. First, it found that, because Motorola could raise its notice-and-comment argument in an APA action in district court, this argument was inappropriate for mandamus. Id. at 10 (citing Apple Inc. v. Vidal, 63 F.4th 1, 14 (Fed. Cir. 2023)). The court added that, because Motorola’s challenge sought institution of specific IPRs, it “falls outside the scope” of the subject matter that Apple v. Vidal had found reviewable (i.e., the APA’s procedural requirements, like the agency’s choice of whether to use notice-and-comment rulemaking to announce institutions instructions). Id. at 10-11. Finally, the order rejected Motorola’s arguments that the USPTO’s decisions were arbitrary and capricious, inadequately explained, and did not account for reliance interests on the grounds that they “do not fall within the limited category of non-constitutional challenges to the applicable factors appropriate to review on limited mandamus relief.” Id. at 11.

The Federal Circuit likewise denied the petition at issue in In re SAP America, Inc., Nos. 25-132, -133, in a non-precedential opinion because “SAP failed to raise its challenges before the agency” and because the Motorola ruling “forecloses relief on those issues.” Slip op. at 2.

The court also denied a joint petition by Samsung and Google in In re Google, No. 25-144, which it characterized as raising “materially similar challenges” to Motorola’s. Slip op. at 3. In this non-precedential opinion, the court separately found that the Google/Samsung petition “misconstrues the Board’s decisions” in arguing that the USPTO’s treatment of the Sotera stipulations violated the separation of powers, concluding that the Board did not demand foregoing invalidity grounds but merely “determined that institution would be inefficient, even in light of the stipulation” given that it would be considering the same claims’ validity almost seven months after the district court trial date. Id. at 4. Although Google and Samsung separately argued that the fees and costs expended in preparing and filing IPRs gave rise to a property interest (an issue not raised by SAP or Motorola in their petitions), the Google order does not address this argument.

The December decisions (Cambridge Industries, SanDisk, and Highlevel)

The following month, the Federal Circuit issued three more denials of mandamus, all nonprecedential, closely tracking its previous precedential decision in In re Motorola Solutions, Inc., No. 2025-134, 2025 WL 3096514 (Fed. Cir. Nov. 6, 2025).

Two decisions focused on the “settled expectations” factor, which the USPTO 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. In the more 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 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.¹

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.

The February decisions (Intel, Kangxi, Tessell, Kahoot!, and Tesla)

The Federal Circuit released five more decisions denying mandamus regarding discretionary denial in late February 2026, closely tracking the reasoning of its prior decisions. In Intel, No. 26-113, the court disagreed with Intel’s characterization of the USPTO’s decision as denying institution solely due to the availability of ex parte reexamination, instead characterizing the decision as finding that reexamination would be more efficient due to the examiner’s familiarity with the issues due to an already co-pending reexamination. Slip op. at 3. It further deemed Intel’s statutory and constitutional arguments not materially distinguishable from those it rejected in Motorola. Id. at 4-5.

In Kangxi, No. 26-115, and Kahoot!, No. 26-119 the Federal Circuit rejected challenges to the “settled expectations” factor, following its decisions in Cambridge and SanDisk.

In Tessell, No. 26-117, the court turned away a challenge to a USPTO determination not to institute “where the inventors of th[e] patent now advocate for its unpatentability.” Slip op. at 2. Although Tessell had argued that the ruling flouted precedent finding assignor estoppel inapplicable to IPR and the USPTO’s own prior precedential decisions, the court found that its statutory arguments were non-appealable challenges to the application of an institution-related statute. Id. at 3-4. As for Tessell’s argument that the USPTO’s departure from its own precedential decisions violated due process, the Federal Circuit held that any reliance on PTAB precedent was no more availing than reliance on the interim guidance at issue in Motorola. Id. at 4. The court thus denied mandamus.

Finally, in Tesla, No. 26-116, the court rejected a challenge to the use of the time-to-trial factor, where the Director had determined it unlikely that a final written decision would issue before the trial in the co-pending district court case. Slip op. at 1-2. The court explained that mandamus relief was not appropriate where Telsa argued that the Director exceeded his statutory authority and noted that the argument did not implicate a constitutional separation of powers challenge. Id. at 2-3 & n.1. The court also rejected the argument that the “Director failed to conduct proper notice-and-comment rulemaking,” citing Apple Inc. v. Squires, 166 F.4th 1349, 1352-53 (Fed. Cir. 2026).

The March decision (Volkswagen)

On March 19, 2026, the court denied Volkswagen’s petition for mandamus, which challenged the “settled expectations” factor and alleged a Constitutional violation grounded in separation of powers principles. In re Volkswagen Grp. of Am., No. 26-123. The court rejected the argument that the Director exceeded his statutory authority, citing prior mandamus decisions like Motorola and Cambridge. Regarding the argument that Congress violated the nondelegation doctrine, the court held that exercising discretion not to institute IPR does not involve legislative power, as it is more akin to a prosecutor’s refusing to indict, “a decision which has long been regarded as the special province of the Executive Branch.” Slip op. at 2-3 (internal quotations, citation omitted). The court distinguished Jarkesy v. SEC, 34 F.4th 446 (5th Cir. 2022), because discretionary denial of an IPR petition “does not involve whether a procedure such as a jury trial should be allowed but rather involves a decision whether to institute proceedings,” which “has no legal effect on the underlying patent rights and obligations[.]” Id. at 3-4 (quoting Apple, 166 F.4th at 1361).

No new mandamus petitions concerning discretionary denial have been filed since Volkswagen on January 6, 2026. It therefore now appears that parties have shifted their strategy from mandamus, which has thus far proven unsuccessful, towards waiting to see the results of the pending notice of proposed rulemaking.

Takeaways

The recent changes in discretionary denial policy at the USPTO and the challenges to those changes have generated considerable uncertainty, which is likely to persist to some degree despite these rulings. Nevertheless, the court’s decisions cast further doubt over whether mandamus is likely to be a fruitful avenue. Thus, although creative petitioners may 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.