1. Whether “[t]he Patent Office violated the 5th Amendment’s Due Process Clause by retroactively revoking its ‘binding agency guidance’ that had guaranteed SAP’s petitions would not be discretionarily denied based on parallel district court litigation, after SAP had reasonably acted in reliance on that binding guidance.”
2. Whether “[t]he Office also violated the separation of powers by discretionarily denying SAP’s (and others’) IPR petitions for reasons that effectively rewrite the statute governing IPRs.”
“Given 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,’ 35 U.S.C. § 314(d), mandamus is ordinarily unavailable for review of institution decisions—including decisions based on the standard for evaluating whether to institute in view of parallel civil litigation . . . . We have noted possible exceptions for ‘colorable constitutional claims,’ . . . and certain statutory challenges . . . . But SAP failed to raise its challenges before the agency. . . . And our decision in In re Motorola Sols., Inc., No. 2025-134 (Fed. Cir. Nov. 6, 2025), ECF No. 44, forecloses relief on those issues.”
