Federal Circuit Limits Mandamus Relief for IPR Institution Decisions

On November 6, 2025, the U.S. Court of Appeals for the Federal Circuit issued three decisions uniformly holding that mandamus relief is unavailable for institution decisions in inter partes review (IPR), except in the very limited circumstances of a colorable constitutional claim or certain statutory challenges: In re Motorola Sols., Inc., No. 2025-134 (Fed. Cir. 2025); In re Google LLC, No. 2025-144 (Fed. Cir. 2025); In re SAP Am., Inc., No. 2025-132, 2025-133 (Fed. Cir. 2025).

Background: USPTO Shifts Discretionary Denial Policy

The Federal Circuit issued these decisions amid a whirlwind of recent changes by the U.S. Patent and Trial Office (USPTO) about how it will exercise its discretion to institute IPR petitions. Under the Biden administration, Director Katherine Vidal issued a June 21, 2022, memorandum (2022 Vidal Memorandum) announcing interim guidance for the Patent Trial and Appeals Board (PTAB) when evaluating whether to institute IPR petitions under 35 U.S.C. § 314. That guidance instructed the PTAB not to discretionarily deny institution of IPRs in view of parallel district court litigation where an IPR petitioner presented a so-called Sotera stipulation agreeing not to pursue an invalidity defense in the parallel litigation on any ground it raised or reasonably could have raised in the IPR. On February 28, 2025, new Acting Director Coke Morgan Stewart rescinded the 2022 Vidal Memorandum. A month later, the Acting Director issued her own March 26, 2025, memorandum in which she set forth new procedures for parties to brief discretionary denial issues and instructed the parties to an IPR to address “all relevant considerations” in their IPR submissions. Applying this new guidance, the USPTO discretionarily denied IPR petitions at a much higher rate.

Application of New Guidance in Motorola, Google, and SAP Cases

The IPR petitions Motorola, Google, and SAP America filed were all denied under this new discretionary denial regime. While Google’s and SAP America’s IPR petitions were denied prior to institution, the PTAB had already instituted Motorola’s IPR when the Acting Director “deinstituted” Motorola’s IPR because the PTAB “gave too much weight to Petitioner’s Sotera stipulation.”

The PTAB’s decision to discretionarily deny an IPR is nonappealable by statute. 35 U.S.C. § 314(d). That statute provides that “[t]he determination by the Director whether to institute an inter partes review under the section shall be final and nonappealable.” (emphasis added). Because § 314(d) bars an appeal of the institution decision, Motorola, Google, and SAP America filed writs of mandamus at the Federal Circuit. All three parties argued that the acting director violated its due process rights under the Constitution and the Administrative Procedure Act (APA) by rescinding the 2022 Vidal Memorandum and applying new rules to its IPR petitions.

Federal Circuit’s Reasoning and Rejection of Mandamus Petitions

The Federal Circuit rejected all three writs, reiterating the mandamus is a “drastic” remedy “to be invoked only in extraordinary situations.” The Federal Circuit explained that § 314(d)’s bar on review renders “mandamus[] ordinarily unavailable for review of institution decisions.” While the court noted possible exceptions for “colorable constitutional claims” and “certain statutory challenges,” no such claims were presented in these three cases.

The constitutional due process arguments failed because the petitioners could not demonstrate that they possessed a property right to have the USPTO institute an IPR that the Director could deprive by denying institution. The Federal Circuit rejected the argument that the 2022 Vidal Memorandum created a constitutionally protected interest because it did not mandate an outcome; it simply provided guidance for the PTAB to apply at its discretion. The Federal Circuit also rejected the parties’ APA challenge, explaining that raising an APA challenge to the recission of the 2022 Vidal Memorandum as effecting a change in law or policy that required notice-and-comment rulemaking would be an end run around § 314(d)’s appellate review bar and that federal district court was the proper place to raise that APA challenge. The Federal Circuit also rejected the petitioners’ argument that the discretionary denial decisions were violated under the APA for being “arbitrary and capricious” because the Director’s exercise of discretion to deny institution is nonappealable under § 314(d). Finally, the court rejected SAP’s writ because it failed to properly raise its challenges before the USPTO.

Key Takeaways

Given § 314(d)’s review bar for IPR institution decisions and the limited availability of mandamus relief, petitioners are left with few avenues to challenge any discretionary denials of their IPR petitions. For petitioners considering a writ of mandamus challenging an IPR institution denial on colorable constitutional or statutory grounds, those arguments should be first raised at the USPTO and not raised for the first time on appeal. Further, a federal district court may be more receptive to an APA challenge in instances where the USPTO effected a change in law or policy without the required notice-and-comment rulemaking than the Federal Circuit will be on mandamus. These three cases collectively may also encourage petitioners to file ex parte reexamination requests under 35 U.S.C. § 302 instead of IPRs given that such reexamination requests are not subject to the same discretionary denial framework petitioners faced by IPRs under § 314, including its review bar.

Key Takeaways for Patent Litigators and PTAB Practitioners

• The Federal Circuit reaffirmed that mandamus is rarely available to review IPR institution decisions, and that only colorable constitutional or narrow statutory claims may qualify.
• Challenges based on the rescission of the 2022 Vidal Memorandum or changes in discretionary denial guidance must generally be raised first at the USPTO, not on appeal.
• APA challenges to procedural shifts in the USPTO’s guidance without the required notice-and-comment rulemaking may be better suited for federal district court in the first instance, as opposed to the Federal Circuit via mandamus.
• Patent challengers may increasingly use ex parte reexaminations as an alternative to IPRs in the face of rising discretionary denial rates.

Key Takeaways for In-House Counsel (Tech, Life Sciences, and Growth Companies)

• The USPTO is currently denying IPR petitions at a much higher rate due to its new discretionary guidance.
• Challenging a denial is now very limited, as the denial is nonappealable and the grounds for mandamus are narrow.
• If you are relying on IPRs to manage litigation risk, consider alternative paths (like ex parte reexaminations).

Key Takeaways for Founders, Executives, and Investors

• It has become harder for companies to use IPRs to challenge patents.
• Patent disputes may be longer or more expensive because the Federal Circuit will rarely review USPTO decisions to deny IPRs.
• Your litigation strategy may need to rely on patent defenses in federal district court or alternative USPTO mechanisms (like ex parte reexaminations).
• This shift may increase the defensive value of issued patents and affect deal diligence and valuation in IP-heavy sectors.