1. “Whether the USPTO violated the APA by:
a. rescinding its binding rule prohibiting discretionary denial of IPRs based on parallel litigation without notice-and-comment rulemaking;
b. retroactively applying the Rescission; and
c. failing to consider reliance interests arising from the June 2022 Memo.”
2. “Whether the USPTO violated the Fifth Amendment’s due-process clause by retroactively applying the Rescission to vacate the Board’s institution decisions, and refusing to consider facts and arguments presented after the Rescission and vacatur.”
1. “[Motorola] first contends that the rescission of the Vidal Memorandum effected a change in law or policy that required notice-and-comment rulemaking. But on that issue, there appears to be no dispute that an APA action in federal district court affords Motorola an available avenue to raise this same challenge. Motorola nevertheless urges that we take up the issue on mandamus . . . . But that request is nothing but an attempted end run around § 314(d)’s bar on review. . . . Motorola next argues that the Acting Director acted arbitrarily and capriciously in applying the recission by, among other things, failing to ‘offer any reasons for the change’ and failing to give proper ‘consideration of the reliance interests engendered by the June 2022 Memo.’ . . . But these arguments are the kinds of arguments that we have said are not reviewable in light of § 314(d) because, at bottom, they challenge ‘the Director’s exercise of [] discretion to deny institution.’”
2. “Motorola’s request for relief is premised on the argument that the Vidal Memorandum created a ‘constitutionally protected interest’ in having its petitions considered without regard to the discretionary Fintiv factors. . . . But this argument runs into at least two obstacles. . . . The Vidal Memorandum did not direct the Board to reach any particular outcome on a petition. . . . Second, Motorola has not shown its identified property right . . . is protected under the Due Process Clause.”
