IP Law Daily, PATENT—Fed. Cir.: Court rejects tech firms’ challenge to USPTO’s refusal to institute IPR, (Nov 6, 2025)

By George Basharis, J.D.

The Federal Circuit rejected petitions by Google, Samsung, and SAP America contesting USPTO denials of inter partes review, ruling that the agency’s discretionary decisions based on parallel litigation were unreviewable and that petitioners failed to show any constitutional or statutory basis for mandamus relief.

The Federal Circuit denied mandamus petitions filed by Google LLC, Samsung Electronics Co., and SAP America, Inc., challenging the U.S. Patent and Trademark Office’s refusal to institute inter partes review (IPR) of patents that were also being litigated in district court. The court concluded that the Acting Director’s denials, issued after the rescission of prior interim guidance concerning parallel proceedings, were within the agency’s unreviewable discretion and did not violate either the Constitution or the Administrative Procedure Act (APA). The decisions reaffirmed that IPR institution determinations are “final and nonappealable.” Both orders cite the court’s companion opinion in In re Motorola Solutions, Inc., No. 2025-134 (Fed. Cir. Nov. 6, 2025)), which rejected nearly identical due process and APA challenges to the same policy change (In re Google LLC, No. 2025-144 (Fed. Cir. Nov. 6, 2025)); (In re SAP America, Inc., Nos. 2025-132, 2025-133 (Fed. Cir. Nov. 6, 2025)).

Rescission of interim PTO guidance. In June 2022, then-Director Katherine Vidal issued interim guidance advising the Patent Trial and Appeal Board not to deny institution “in view of parallel district court litigation” when a petitioner filed a stipulation agreeing not to pursue in court any invalidity grounds that could reasonably have been raised in an IPR. That guidance was to remain in effect “until further notice.”

Following a change in administration, the Acting Director withdrew the interim guidance on February 28, 2025, and directed that petitions be evaluated under the Board’s established discretionary standard for cases involving overlapping civil proceedings. The rescission was applied to petitions that had not yet reached an institution decision or were pending Director review, prompting objections from parties that had relied on the prior instructions when filing their petitions.

Google and Samsung. Google and Samsung jointly petitioned for IPR of patents owned by Cerence Operating Co., which were simultaneously being asserted against Samsung in district court. The Board denied institution, finding that the civil trial was scheduled to occur about seven months before a final written decision would be due and that proceeding with IPR would risk duplicative effort and inconsistent outcomes.

Google and Samsung argued that the denial violated the Due Process Clause and the APA because the petitions had been filed while the interim guidance was still in effect. They contended that the USPTO’s withdrawal of that guidance, just before denying institution, was arbitrary and deprived them of a fair opportunity for review.

The Federal Circuit disagreed. The court explained that Congress committed institution decisions to the Director’s discretion and insulated them from judicial review. Because no “colorable constitutional claim” or statutory challenge had been shown, the court held that mandamus was unavailable.

The panel noted that a nearly identical challenge to the rescission had already been rejected earlier that day in In re Motorola Solutions. As in Motorola, the court found that the prior guidance did not create a constitutionally protected interest and that reliance on it when filing IPR petitions could not give rise to a due-process violation. The court also rejected assertions that the Board had imposed obligations beyond those set out in the Patent Act’s estoppel provisions, concluding that it had merely exercised its discretion to weigh efficiency and overlap between the two proceedings.

SAP America. SAP America had sought IPR of two patents owned by Cyandia Inc. based on prior publications describing IBM’s WebSphere system. SAP filed its petitions in October 2024, including a stipulation that it would not pursue in court any invalidity grounds that could have been raised in IPR.

After the February 2025 rescission, the Board denied institution, citing the advanced stage of the district-court case and finding that SAP’s stipulation “had limited practical effect” in avoiding overlap. The Acting Director declined review, and SAP sought mandamus from the Federal Circuit.

The court again denied relief, holding that SAP had not preserved its constitutional and APA challenges before the USPTO. Even if properly raised, the court said, the claims were foreclosed by Motorola, which held that the rescission neither required notice-and-comment rulemaking nor infringed any protected right. Because institution decisions are committed to agency discretion, SAP could not show a clear and indisputable right to relief or that mandamus was appropriate under the circumstances.

Motorola provides controlling analysis. The Federal Circuit’s reasoning in Motorola supplied the analytical foundation for both outcomes. In that case, the Acting Director had deinstituted IPRs previously granted to Motorola after concluding that continued review would be inefficient in light of parallel litigation. The company argued that rescinding the 2022 guidance violated due process and the APA. The Federal Circuit rejected those arguments, holding that the interim guidance did not create an entitlement to any particular outcome and that the PTO’s discretion to modify or withdraw internal procedures was not constrained by notice-and-comment requirements.

Narrow scope of mandamus. Both orders reaffirm the limited scope of judicial review under the Patent Act provision that makes IPR institution decisions final and nonappealable. The court emphasized that institution decisions, whether to institute or deny IPR, are not subject to appeal or collateral challenge. Mandamus is reserved for extraordinary situations involving clear statutory violations or genuine constitutional claims, neither of which was present here.

The panel also underscored that interim procedural guidance cannot create binding rights. Petitioners who file under such policies do so with notice that the agency may revise or withdraw them at any time. The USPTO’s decision to revert to its traditional discretionary standard therefore did not deprive any petitioner of property or process protected by law.

The Cases are No. 25-144; and Nos. 25-132, and 25-133.

Judge: Linn, R.

Attorneys: Nathan K. Kelley (Perkins Coie LLP) for Google LLC, Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. Peter John Sawert, U.S. Patent and Trademark Office, for John A. Squires. John D. Vandenberg (Klarquist Sparkman, LLP) for SAP America, Inc. James R. Hannah (Herbert Smith Freehills Kramer LLP) for Cyandia, Inc.

Companies: Google LLC; Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.; SAP America, Inc.; Cyandia, Inc.

Cases: Patent FedCirNews USPTO