Federal Circuit IP
Three Mandamus Petitions Denied
Three Mandamus Petitions Denied (Nov. 6, 2025)
Cases:
- In re Motorola Solutions, Inc., No. 2025-134 (precedential)
- In re Google LLC, No. 2025-144 (non-precedential)
- In re SAP America, Inc., No. 2025-132 (non-precedential)
Background:
- Motorola: Most severe impact—eight IPRs initially instituted were later deinstituted.
- Google & Samsung: Challenged denials despite Samsung’s Sotera stipulation.
- SAP: Similarly challenged discretionary denials after making a Sotera commitment.
- All three petitions challenged the USPTO’s February 2025 rescission of the Vidal Memorandum, which had:
- Provided a safe harbor (via Sotera stipulations) against discretionary Fintiv denials.
- Limited Fintiv-based denials where petitioners pledged not to raise overlapping invalidity grounds in district court.
Petitioners’ Arguments:
- Acting Director Stewart violated due process by rescinding the Vidal Memorandum after petitions were filed, and violated the Administrative Procedure Act (APA) by changing policy without notice-and-comment rulemaking, and applying the rescission retroactively.
Holdings:
- Panel (Judges Dyk, Linn, Cunningham/Stoll) rejected all petitions.
- Held that 35 U.S.C. § 314(d) makes IPR institution decisions “final and nonappealable.”
- Mandamus is “ordinarily unavailable” to review the Director’s discretionary institution determinations.
- No “colorable constitutional claims” were presented.
- Most APA challenges to institution decisions fall outside the narrow exceptions permitted under Apple, SAS, and Mylan.