IP Law Daily, PATENT—Fed. Cir.: Motorola’s mandamus petition over USPTO Director’s deinstitution of IPRs denied, (Nov 7, 2025)

By Saurabh Kashyap, B.A., M.A., LL.B., LL.M.

The court upholds the USPTO Director's broad discretion, finding no due process or APA violation in the rescission of prior IPR guidance.

The U.S. Court of Appeals for the Federal Circuit denied Motorola Solutions, Inc.’s petition for a writ of mandamus, holding that the company failed to demonstrate any clear entitlement to relief following the U.S. Patent and Trademark Office (USPTO) Acting Director’s decision to deinstitute eight inter partes reviews (IPRs) of patents owned by a licensing entity. The Federal Circuit rejected Motorola’s claims that the Acting Director’s rescission of former Director Katherine Vidal’s 2022 interim guidance violated the Administrative Procedure Act (APA) and the Due Process Clause. The court concluded that the USPTO Director’s discretion over institution decisions, protected under 35 U.S.C. § 314(d), foreclosed judicial review of the challenged actions (In re Motorola Solutions, Inc., No. 25-134 (Fed. Cir. Nov. 6, 2025)).

Background. The petitioner, Motorola Solutions, Inc., is a U.S.-based global communications technology company specializing in public safety, broadband, and enterprise security systems. The respondent, Stellar, LLC, is a patent-holding and licensing company that develops and monetizes communication and network-related technologies.

The IPRs at issue concerned eight Stellar patents. Motorola petitioned for IPRs under 35 U.S.C. §§ 311–319, arguing that the asserted patents were unpatentable in light of prior art references. The petitions were initially instituted by the Patent Trial and Appeal Board (PTAB) before being deinstituted by the Acting Director.

The litigation between the parties began in August 2023 when Stellar filed an infringement suit against Motorola in the district court. While the case was pending, Motorola filed its IPR petitions in mid-2024, offering a Sotera stipulation—an undertaking not to pursue in the parallel litigation any unpatentability grounds that could have been raised in the IPRs. The PTAB initially instituted all eight IPRs.

However, following Stellar’s request for Director Review, the Acting Director of the USPTO rescinded the 2022 “Vidal Memorandum,” which had previously instructed the PTAB not to deny institution based solely on parallel district court proceedings when a Sotera stipulation was offered. The rescission reinstated the NHK Spring Co. v. Intri-Plex Techs., Inc., No. IPR2018-00752 (PTAB Sept. 12, 2018), and Apple Inc. v. Fintiv, Inc., No. IPR2020-00019 (PTAB Mar. 20, 2020) discretionary framework (“Fintiv factors”), under which the PTO may deny IPR institution in light of concurrent district court litigation.

Applying these factors, the Acting Director found deinstitution appropriate, emphasizing the significant progress in the parallel litigation and the inefficiency of duplicative proceedings. Motorola’s request for reconsideration was denied on May 23, 2025. The company then filed for mandamus, alleging that the rescission of the Vidal Memorandum was retroactive, arbitrary, and violative of due process and APA standards.

Mandamus standard. The appellate court noted that mandamus is an extraordinary remedy, available only when the petitioner shows a “clear and indisputable” right to relief, no adequate alternative remedy, and appropriateness under the circumstances, citing Kerr v. U.S. Dist. Ct. for N. Dist. of Cal., 426 U.S. 394, 402 (1976), and Cheney v. U.S. Dist. Ct. for D.C., 542 U.S. 367, 380 (2004).

The court underscored that Congress vested the USPTO Director with unreviewable discretion over IPR institution decisions. Citing Mylan Laboratories Ltd. v. Janssen Pharmaceutica, N.V., 989 F.3d 1375, 1382 (Fed. Cir. 2021), the court reaffirmed that denials of institution, including those based on Fintiv considerations, are not subject to judicial review absent colorable constitutional claims.

Due process. Motorola argued that rescission of the Vidal Memorandum deprived it of a “constitutionally protected interest” in having its petitions considered without Fintiv-based discretionary denial. The Federal Circuit rejected this argument, holding that no due process protection attaches to a discretionary administrative benefit. Citing Board of Regents v. Roth, 408 U.S. 564, 577 (1972), and Cushman v. Shinseki, 576 F.3d 1290, 1298 (Fed. Cir. 2009), the court clarified that only legitimate claims of entitlement, not mere unilateral expectations, create property interests protected by the Due Process Clause.

The court noted that the Vidal Memorandum did not establish a binding rule or entitlement to institution but rather constituted interim guidance “to remain in place until further notice.” Accordingly, Motorola could not claim a vested right to a particular procedural framework. The panel invoked Olim v. Wakinekona, 461 U.S. 238, 250 (1983), observing that “process is not an end in itself” and that expectation of procedural regularity does not create a property interest.

Additionally, the court found no unfair surprise or retroactive application sufficient to raise due process concerns. It emphasized that Motorola knew the PTO’s interim guidance could be modified and that the rescission occurred before any final institution decision had been made.

APA challenge. Further, Motorola contended that the Acting Director’s rescission of the Vidal Memorandum amounted to a substantive rule change that required notice-and-comment rulemaking under 5 U.S.C. § 553. The Federal Circuit rejected this claim, noting that Motorola had an alternative remedy through an independent APA action in district court. Citing Apple Inc. v. Vidal, 63 F.4th 1, 14 (Fed. Cir. 2023), the panel emphasized that mandamus could not be used as an “end run” around § 314(d)’s jurisdictional bar.

The court also relied on Mylan Laboratories, which had previously denied mandamus relief on a similar claim that the PTO’s use of the Fintiv framework required formal rulemaking. As in Mylan, the panel held that challenges to the process by which discretionary guidance is issued do not overcome the statutory prohibition on appellate review of institution decisions.

Arbitrary and capricious claims. Additionally, Motorola argued that the Acting Director acted arbitrarily and capriciously by failing to account for the reliance interests engendered by the Vidal Memorandum. The Federal Circuit dismissed this argument as unreviewable, reasoning that it directly implicated the Director’s discretionary weighing of factors in deciding whether to institute IPRs.

The court reaffirmed that “the Director’s exercise of discretion to deny institution,” including the weighing of efficiency and resource considerations, is insulated from review under § 314(d). The panel held that neither constitutional nor statutory exceptions applied to Motorola’s claims.

The Case is No. 25-134.

Judge: Linn, R.

Attorneys: Matthew J. Silveira (Jones Day) for Motorola Solutions, Inc. Timothy Edward Grochocinski (Nelson Bumgardner Conroy PC) for Stellar, LLC.

Companies: Motorola Solutions, Inc.; Stellar, LLC

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