Last month, the Federal Circuit issued an order denying a petition for a writ of mandamus in In re Motorola Solutions, Inc., a patent case we have been following because it attracted five amicus briefs. In the petition, Motorola Solutions challenged the Patent and Trademark Office’s rescission of a memorandum governing discretionary denial of petitions for inter partes review. Motorola argued the rescission violated the Administrative Procedure Act as well as its due process rights. Judge Linn authored the order denying the petition. This is our summary of the order.
Judge Linn began by explaining the background of inter partes review proceedings, including the relevant memorandum and its rescission:
Congress established a process for IPR of an issued patent. Given ‘the likelihood of parallel pending proceedings in the PTO and in the courts,’ and inefficiencies that could result from both the PTO and the courts deciding overlapping issues at the same time, Congress imposed certain safeguards . . . ‘But Congress generally left the two branches to exercise their available discretion to address such issues.’ The Director, who is tasked with determining whether to institute IPR . . . addressed this topic in 2019 and 2020 . . . thereby establishing a multi-factor discretionary standard [(‘Fintiv factors’)] to be used by the agency for determining whether to deny institution of IPR in situations where there are pending parallel proceedings.
On June 21, 2022, then-Director, Katherine K. Vidal, issued a memorandum announcing interim guidance to the Board on how to apply the Fintiv factors while the agency explored potential rulemaking (‘Vidal Memorandum’). Under that guidance, the Board would not ‘discretionarily deny institution in view of parallel district court litigation where a petition presents’ a so-called Sotera stipulation: ‘a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the [Board].’
Then, on February 28, 2025 . . . the Acting Director rescinded the Vidal Memorandum. . . Chief Administrative Patent Judge Boalick explained that the recission to the Vidal Memorandum was made because the agency ultimately decided not to propose a rule. He further instructed: (1) that the rescission ‘applies to any case in which the Board has not issued an institution decision, or where a request for rehearing or Director Review of an institution decision was filed and remains pending’; (2) that the Board not consider a Sotera stipulation as ‘dispositive’ but rather as ‘highly relevant’; and (3) that the Board ‘consider timely requests for additional briefing on the application of the Interim Procedure’s recission on a case-by-case basis.’
Judge Linn then summarized the procedural background of Motorola’s challenge:
In August 2023, Stellar filed suit against Motorola in district court alleging infringement of claims of eight patents. While that court case was pending, Motorola filed a first set of petitions asking to institute IPR in July 2024 and a second set of petitions in August 2024. Motorola filed a Sotera stipulation . . . . The Board initially instituted IPRs on both sets of petitions, prompting Stellar to seek Director Review. . . . [O]n March 28, 2025, the Acting Director deinstituted the first set of IPRs based on the Fintiv factors, concluding that the “Board did not give enough weight to the investment in the parallel proceedings and gave too much weight to Petitioner’s Sotera stipulation.” Motorola then moved for reconsideration . . . . On May 23, 2025, the Acting Director: (1) denied Motorola’s motion for reconsideration on the first set of petitions and (2) granted Director Review on the second set of petitions and deinstituted the IPRs, having found it would be an inefficient use of agency resources given the civil action.
Motorola now seeks mandamus. Motorola primarily challenges the Acting Director’s rescission of the Vidal Memorandum and application of that rescission under APA requirements and guarantees. Motorola also argues that the application of that rescission under the circumstances violates its due process rights.
After briefly explaining the high standard for mandamus relief generally, Judge Linn noted that “mandamus is ordinarily unavailable for review of institution decisions.” He explained, moreover, that “Congress committed institution decisions to the Director’s discretion” and “protected that exercise of discretion from judicial review by making such determinations ‘final and nonappealable.'”
Judge Linn next addressed Motorola’s due process arguments. He explained that “[t]he Constitution does not itself define the property rights that are subject to due process.” Therefore, he continued, “a party must draw upon ‘existing rules or understandings that stem from an independent source,'” which may include an agency regulation. Judge Linn observed that Motorola did not claim any property right in the institution of IPR itself, nor could it, because, “when a statute leaves a benefit to the discretion of a government official, no protected property interest in that benefit can arise.” He also noted that Motorola did not “ask for additional process before deprivation of any purported protected interest.”
Judge Linn explained that Motorola instead argued that “the Vidal Memorandum created a ‘constitutionally protected interest’ in having its petitions considered without regard to the discretionary Fintiv factors.” Judge Linn did not agree, saying “this argument runs into at least two obstacles.”
First, according to Judge Linn, the Vidal Memorandum is not an application for “non-discretionary benefits in which a particular outcome is mandated ‘upon a showing that [the applicant] meets the eligibility requirements set forth in the governing statutes and regulations,’” which the Federal Circuit has held may “involve a property interest protected by the Due Process Clause.” He noted that “[t]he Vidal Memorandum did not direct the Board to reach any particular outcome on a petition.”
Second, the judge observed, “Motorola has not shown its identified property right—entitlement to ‘consideration of its petitions on the merits without risking discretionary denial based on parallel district court proceedings,’—is protected under the Due Process Clause.” He noted that there is “no ‘history or tradition’ that supports recognizing for these purposes a constitutionally protected right to have the Board consider Motorola’s petitions without regard to the Fintiv factors, even if it stipulates to not raising the challenges in parallel district court proceedings.” He further explained that there is no “meaningful way to distinguish between that purported right and the desired process requested to protect that right.” Judge Linn, therefore, concluded that “Motorola here relies on nothing more than its own unilateral expectation based on the prior interim procedural guidance—not any separate property interest—to support its due process claim.”
Judge Linn concluded that there is “no due process violation by the Acting Director applying the recission of the Vidal Memorandum to the petitions.” He explained that “Motorola did not experience anything close to the kind of unfair surprise that might raise a due process violation.” He said, moreover, that “recission of the interim guidance did not affect Motorola’s ability to properly raise its patentability defenses elsewhere as the Sotera stipulation only conditioned Motorola’s ability to raise its patentability challenges in an IPR.”
Judge Linn next addressed Motorola’s two arguments based on the APA. First, he addressed the argument that “the rescission of the Vidal Memorandum required notice-and-comment rulemaking.” He noted that “an APA action in federal district court affords Motorola an available avenue to raise this same challenge,” and as a result he said the Federal Court would not address that argument here. He did note, however, that Motorola’s asking the Federal Circuit to address the issues through mandamus is “an attempted end run around § 314(d)’s bar on review.”
Judge Linn next addressed Motorola’s second argument that “the Acting Director acted arbitrarily and capriciously in applying the recission. by . . . failing to ‘offer any reasons for the change’ and failing to give proper ‘consideration of the reliance interests engendered by the June 2022 Memo.'” Judge Linn indicated these arguments “are not reviewable in light of § 314(d) because, at bottom, they challenge “the Director’s exercise of [] discretion to deny institution.” He concluded Motorola’s claims did “not fall within the limited category of non-constitutional challenges to the applicable factors appropriate to review on limited mandamus relief.”
As a result of Judge Linn’s analysis, the panel denied Motorola’s petition.