On November 6, the Federal Circuit, in In re Motorola Solutions, Inc., denied Motorola’s request for mandamus and ruled that the decisions made by the USPTO Director to deny or de-institute inter partes review (IPR) are not subject to judicial review under 35 U.S.C. § 314(d). The court rejected Motorola’s arguments based on due process and the Administrative Procedure Act (APA), which challenged the rescission of previous guidance.
The court reaffirmed its stance on the nearly absolute prohibition on judicial review of the Patent Trial and Appeal Board (PTAB) institution decisions. Motorola had sought mandamus after the Acting Director of the USPTO rescinded the 2022 Fintiv/Sotera guidance, introducing a new set of criteria for discretionary denials. These changes led to the de-institution of eight IPRs. The original Sotera guidance stated that the PTAB generally would not deny institution of an IPR if parallel district court litigation existed, provided the petitioner submitted a stipulation agreeing not to pursue the same grounds in the parallel court case.
Motorola argued that this sudden policy shift violated the APA and due process, claiming it had relied on the earlier guidance and had a vested interest in maintaining the instituted reviews. However, the Federal Circuit disagreed. The court explained that § 314(d) makes PTAB institution decisions "final and nonappealable." The Federal Circuit pointed to prior Supreme Court decisions (Cuozzo, Thryv) that ruled judicial review is not permitted, even when petitioners frame their objections as challenges under the APA or constitutional claims. The court also noted that there is no property interest in the continuation of an IPR and that revising internal guidance does not require notice and comment, as such guidance is not a legislative rule.
The ruling emphasized that mandamus cannot be used as a means to challenge discretionary decisions or policy changes, even when they affect ongoing cases.
This decision underscores the broad authority of the USPTO Director over institution decisions, signaling that petitioners can no longer rely on past guidance as a safe approach. Patent practitioners are now advised not to view IPRs as guaranteed elements of their litigation strategies. Instead, early filing and the development of strong invalidity defenses for district court proceedings are essential. Patent owners, on the other hand, can leverage the progress of parallel litigation to encourage discretionary denials. Both sides must recognize that Director Review has become a critical gatekeeper, and appellate options are now highly limited.