Late last month, the Federal Circuit issued an order in In re Intel Corporation, a patent case we have been following because it attracted an amicus brief. In this case, Intel petitioned the court for a writ of mandamus to challenge the Patent Trademark Office’s denial of its request for institution of inter partes review. In a per curiam order, a panel consisting of Judges Taranto, Mayer, and Stark denied the petition. This is our summary of the order.
The panel began by outlining the factual and procedural background:
USTA owns U.S. Patent No. RE47,720, which relates to increasing spectrum in a wireless network. Several months before Intel sought IPR, the PTO ordered ex parte reexamination (“EPR”) of the ’720 patent. In . . . March 2025, the examiner rejected the challenged claims. The following month, Intel filed the present IPR petition, arguing, inter alia, that the challenged claims would have been obvious over a prior art reference (Walton) in combination with other references. In June 2025, USTA filed in the EPR its response to the office action and a disclosure statement containing Intel’s petition and Walton. In July 2025, the PTO issued a reexamination certificate and ended the EPR. In October 2025, the PTO discretionarily denied institution of Intel’s IPR petition. It agreed with Intel that the examiner did not appear to consider Walton during the EPR and that Walton is material to at least one of the challenged patent claims. However, the PTO determined that, under the circumstances, “the most efficient process for the Office” is “not to refer the [p]etition” to the Patent Trial and Appeal Board, but for Intel “to file a reexamination request that includes Walton.” . . . Intel now seeks mandamus relief to compel the PTO to vacate its non-institution decision and reconsider institution.
After briefly addressing the standard for mandamus, the panel turned to Intel’s key arguments.
First, the panel addressed Intel’s contention that “the PTO exceeded its authority by denying IPR ‘merely because EPR exists as an alternative’ to challenge the patent claims.” The panel characterized that argument as a misrepresentation of the agency’s reasoning. The PTO, it explained, “simply concluded that EPR, rather than IPR, would be the most efficient use of resources here because of the examiner’s greater familiarity with the underlying issues.” In the panel’s view, “Intel has not shown any clear and indisputable entitlement to disturb that fact-specific conclusion given the limits on our reviewability of non-institution decisions.”
Next, the panel rejected Intel’s statutory-based challenges, explaining how they are “merely challenges to what factors the Director may consider when deciding whether to institute IPR and to the PTO’s exercise of discretion not to institute such review.” According to the panel, these are matters that are not subject to judicial review.
Finally, the panel concluded that “Intel has also not presented a colorable constitutional claim.” In particular, it explained, Intel “has not shown the PTO violated the Due Process Clause based merely on acceptance of IPR filing fees and Intel’s unilateral expectation that IPR would not be denied in favor of other administrative review proceedings.” Also, the panel held, “Intel [has not] presented a colorable equal protection claim.” The panel characterized Intel’s arguments—”that the PTO ‘had no rational basis for requiring EPR over IPR in this case but not others’ . . . and that the PTO ‘ignor[ed]’ its precedent”—as “nothing more than disagreements with the outcome, which do not present reviewable challenges.”
As a result of its analysis, the panel denied Intel’s petition for a writ of mandamus.