IP Law Daily, VITAL BRIEFING: IPR petitioners lose in bid for mandamus relief against ‘settled expectations’ denials, (Dec 10, 2025)
Petitioners who assert that rule has no basis in law and was improperly adopted are likely to pursue APA lawsuits next. A new Vital Briefing article looks at the current state of the dispute.
Rebuffed petitioners for inter partes review whose requests were denied under the USPTO’s new “settled expectations” rule have struck out in their attempts to obtain mandamus relief from the U.S. Court of Appeals for the Federal Circuit. Under the controversial rule, adopted earlier this year, the Director has declined to institute review of patent claims that have been in force for more than a few years—typically six or more, but sometimes fewer—on the ground that the patentee has developed settled expectations as to the validity of the claims. The Federal Circuit has denied petitions for writs of mandamus in two cases in which IPR petitioners claim that the new rule goes against the provisions of the Patent Act and violates constitutional due process (In re Cambridge Industries USA. Inc., No. 26-101 (Fed. Cir. Dec. 9, 2025); In re Sandisk Technologies, Inc., No. 2025-152 (Fed. Cir. Dec. 9, 2025)).
A Vital Briefing article explains the court’s reasons for denying relief. In short, the court held that, given the limitations on appeals of noninstitution decisions by the Director, the petitions failed to “show a clear and indisputable right to the relief requested” and did not set forth “colorable constitutional claims.” Moreover, the court said that the petitioning parties have an alternative avenue for relief in the form of lawsuits under the Administrative Procedure Act (APA), through which they can pursue their assertions that the rule was improperly adopted without the required notice-and-comment rulemaking process. One commentator declared on social media that, after the Federal Circuit’s orders, “IPRs are officially dead”; another made the case for carrying through with APA litigation.
The article, titled “Federal Circuit denies mandamus to review petitioners challenging USPTO’s ‘settled expectations’ rule,” is available here. It is a follow-up to an earlier Vital Briefing article discussing the mandamus petitions in these cases and other challenges to the USPTO’s “settled expectations” rule.
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