Unpacking Appellate Challenges to the USPTO’s Discretionary Denial Framework

Since the United States Patent and Trademark Office (USPTO) rescinded former Director Vidal’s 2022 memorandum concerning discretionary denials under the Fintiv framework (Vidal Memo) in Patent Trial and Appeal Board (PTAB)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.

The Federal Circuit’s decisions in Motorola, SAP, and Google

The most detailed decision, 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.

Mandamus petitions are still pending

A number of mandamus petitions on discretionary denial remain pending, including three pertaining to the “settled expectations” factor announced in the 2025 Interim Memo:

• In re SanDisk Technologies, Inc., No. 25-152
• In re Cambridge Industries USA, Inc., No. 26-101
• In re Maplebear Inc., No. 26-105

These petitions assert that the application of the “settled expectations” factor to IPR petitions filed before March 26, 2025, is impermissibly retroactive (under both due process and the APA), that notice-and-comment rulemaking was required, and that the USPTO’s creation of this factor violates both the AIA and the separation of powers. The Maplebear petition also addresses the 2025 Interim Memo’s factor addressing whether the PTAB or another forum has already adjudicated the validity or patentability of the challenged claims.¹

Although the court’s decisions in Motorola, SAP, and Google provide insight into some of the issues raised in these petitions, they present constitutional arguments, like the separation of powers issue, in meaningfully different contexts. Practitioners can expect further guidance on the viability of the USPTO’s discretionary denial policies over the next few months.

APA actions in district court: An alternative path to challenge the USPTO?

An issue lurking in the background is whether aggrieved petitioners could instead challenge the USPTO’s application of its discretionary denial framework in district court under the APA. Although the Motorola decision forecloses mandamus relief based on an argument that notice-and-comment was required because a district court APA action is an available avenue to raise such a challenge, the court’s reasoning may apply with equal force to other potential issues. In Apple v. Vidal, on remand, the district court found that the Fintiv standard is a “general statement of policy, rather than a substantive or legislative rule” such that the USPTO was not required to conduct notice-and-comment rulemaking to implement it. See Apple Inc. v. Vidal, Case No. 20-cv-06128, 2024 WL 1382465, *13 (N.D. Cal. Mar. 31, 2024). The appeal in that case is fully briefed, and oral argument is expected in Q1 2026. See Apple Inc. v. Squires, No. 24-1864 (Fed. Cir.). The decision there could strongly influence whether bringing a district court APA action would be an effective vehicle to challenge the USPTO’s policies.

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, as opposed to a district court APA action, is likely to be a fruitful avenue. As practitioners wait for additional guidance from the Federal Circuit in the pending mandamus petitions and the Apple v. Vidal remand appeal, petitioners would be wise to present their strongest cases under current policies while preserving challenges to those policies before the agency so that they may benefit from additional rulings. Indeed, the SAP decision underscores the importance of raising APA and constitutional challenges before the agency as a predicate to seeking relief elsewhere. Stakeholders also have the opportunity to comment on the USPTO’s proposed rulemaking through December 2, 2025.