Mandamus Muddle: What the Federal Circuit’s Recent Decisions Mean For the PTAB

Since the start of 2025, the new USPTO administration has been reshaping trial proceedings at the Patent Trial and Appeal Board (PTAB). Some stakeholders have pushed back in court, including through mandamus petitions at the Court of Appeals for the Federal Circuit.

This last week the Federal Circuit issued its first set of decisions in response. The court denied a trio of mandamus petitions from Motorola Solutions (Motorola) and others, finding that the petitioners had not met the very high bar for mandamus relief based on allegations of due process and Administrative Procedure Act (APA) violations.

These decisions will not end the matter. Mandamus petitions remain pending on more recent changes at the PTAB, and the USPTO has issued a Notice of Proposed Rulemaking (NPRM) that may elicit further challenges. Predicting the resolution of these challenges is difficult in this evolving environment, but last week’s decisions offer a few clues.

The Mandamus Decisions

The Federal Circuit’s decisions arise from a 2022 memorandum by then‑USPTO Director Kathy Vidal. Before the Vidal Memorandum, the PTAB had applied a multi-factor test—sometimes referred to as Fintiv[1]—to determine whether a challenge would be an efficient use of its resources. Under Fintiv, the PTAB routinely denied challenges where court proceedings were co-pending.

The 2022 Vidal Memorandum allowed challengers to sidestep this result under Fintiv by providing a “Sotera”[2] stipulation. In its stipulation, the challenger would promise to not pursue in a parallel proceeding the grounds that it raised (or reasonably could have raised) in its challenge at the PTAB. Over the past three years, myriad challengers—including Motorola—have filed Sotera stipulations in view of the Vidal Memorandum.

That all changed on February 28, 2025, when the new USPTO administration rescinded the Vidal Memorandum. The Acting Director then vacated the PTAB’s decision to institute review of Motorola’s petition for inter partes review (IPR). Although Motorola had filed a Sotera stipulation, the Acting Director found that that the PTAB did “not give enough weight to the investment in [co-pending] parallel proceedings and gave too much weight to [Motorola’s] Sotera stipulation.”[3]

Motorola and other similarly situated parties subsequently petitioned for mandamus relief from the Federal Circuit. Motorola argued that the Vidal Memorandum created a “constitutionally protected interest” to have its challenge considered without regard to Fintiv.[4]

Disagreeing, the Federal Circuit denied Motorola’s petition. The court applied the high bar that governs mandamus petitions, requiring a “clear and indisputable” right to relief and no “alternative means to obtain” that relief.[5] The court explained that the bar is even higher in the context of challenges to PTAB institution and de-institution decisions. Congress committed those decisions to the Director’s discretion and generally prohibited judicial review in 35 U.S.C. § 314(d), which provides that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”[6]

Under that restrictive framework for review, the Federal Circuit concluded that Motorola’s purported interest—having its challenge considered free of Fintiv—is not a property right protected by the Due Process Clause of the Constitution.[7] First, the court explained that institution remained discretionary under the Vidal Memorandum, which did not “direct the Board to reach any particular outcome on a petition.”[8] Second, citing an earlier Federal Circuit decision (Mylan),[9] the court saw no “history or tradition” that supported such a right.[10] Nor were Motorola’s due process rights violated by what it viewed as the PTAB’s retroactive application of the rescission. The Vidal Memorandum was interim guidance that, according to the court, Motorola knew could be modified at any time.[11]

On Motorola’s APA[12] challenge, the Federal Circuit concluded that mandamus relief was unavailable both because of the mandamus standard and because of Congress’s limits on judicial review of institution decisions. Motorola had argued that rescinding the Vidal Memorandum should have required notice-and-comment rulemaking. But the court explained that Motorola could bring an APA action in federal district court, and the availability of that alternative route bars mandamus relief.[13] Although Motorola argued that a standalone APA action would not provide a remedy here, the court explained that granting mandamus would circumvent § 314(d)’s limit on judicial review of institution decisions.[14] 

In two other decisions accompanying Motorola, the Court denied similar mandamus petitions by parties including Google and SAP.[15]

The Impact of the Mandamus Decisions

How this trio of Federal Circuit decisions will affect the PTAB landscape on discretionary denials remains an open question. At minimum, the decisions will hinder the ability of patent challengers to revive non-instituted IPR petitions via mandamus petitions. Relatedly, the decisions reaffirm the Court’s unwillingness to consider mandamus challenges that present an “end run” around § 314(d).

That said, the decisions addressed a particular factual scenario: the USPTO’s rescission of the Vidal Memorandum. That memorandum set forth “interim” guidance. Motorola was unable to show that this temporary procedure created a “constitutionally protected interest.” Moreover, even though § 314(d) helped foreclose mandamus relief for these petitions, the court left the door open for other mandamus challenges to institution decisions. It noted two exceptions to § 314(d): “colorable constitutional claims” (citing Mylan) and “certain statutory challenges” (citing Apple Inc. v. Vidal, 63 F.4th 1, 12 n.5 (Fed. Circ. 2023)). Both cases, in turn, referenced the Supreme Court’s Cuozzo decision, where the Court explained that USPTO “shenanigans” may be properly reviewable under the APA.[16] The Motorola court’s exceptions may become important in other pending mandamus challenges and may even foretell challenges to the NPRM, as discussed below.

Pending Mandamus Petitions

Multiple mandamus petitions unrelated to the rescission of the Vidal Memorandum remain pending. For example, some challenge the USPTO’s use of “settled expectations” to deny IPR challenges. In a June 2025 decision, the then-Acting Director ruled that “the longer the patent has been in force, the more the settled expectations should be.”[17] Because the patent at issue had been in force for almost eight years, the Acting Director denied review. That principle has since led to the denial of many IPR challenges of patents issued more than six years ago.

At least three separate mandamus petitions are challenging the application of “settled expectations.” The lead petition is by Sandisk Technologies, Inc. and Western Digital Technologies, Inc. They raise arguments similar to those raised in Motorola, e.g., that the USPTO should have engaged in notice-and-comment rulemaking before taking action. The Federal Circuit’s disapproval of that argument in Motorola and observation that Motorola could still raise a district court APA challenge make that argument difficult.

Other “settled expectations” arguments in the lead petition are tied to the Constitution and potentially could trigger Motorola’s exceptions to mandamus relief for institution decisions. For example, the lead petition raises a separation of powers issue, namely, that “settled expectations” is an extra-statutory criterion that conflicts with the America Invents Act (AIA). In the AIA, Congress spoke on the availability of an IPR challenge in a patent’s life: within the first nine months of a patent’s issuance, only a post-grant review (PGR) challenge is available; after that, an IPR is the proper challenge.[18] The statute does not restrict an IPR challenge to the first six years after a patent’s issuance. Thus, the Director’s use of “settled expectations” arguably limits IPRs in contravention of the AIA framework.

How the Federal Circuit will rule on mandamus is unclear. In one of the decisions accompanying Motorola, the Court dismissed a separation of powers argument. It found that the PTAB was simply weighing factors—a determination that did “not raise any colorable constitutional challenge” and that was “otherwise unreviewable.”[19] Many of the PTAB’s decisions based on “settled expectations” do emphasize, albeit without detail, that the decision was based on a “holistic assessment.”[20] This would appear to provide the Federal Circuit with a hook should it decide to dismiss mandamus relief.

The Notice of Proposed Rulemaking

On October 16, 2025, the USPTO Director announced the NPRM, which was published in the Federal Register the next day.[21] The NPRM presents proposed amendments to 37 C.F.R. § 42.108 relating to IPR institutions. The proposed rule changes would:

• Require an IPR petitioner to file a stipulation, at the PTAB and in any other forum where Petitioner is litigating or later litigates the challenged patent, not to pursue unpatentability or invalidity grounds under 35 U.S.C. §§ 102 or 103 in another proceeding;
• Bar institution when the USPTO or another forum already adjudicated patentability or validity of the claims;
• Bar institution when another proceeding is likely to determine patentability or validity of the claims under §§ 102 or 103 first; and
• Permit institution notwithstanding a prior adjudication or expected earlier determination on patentability or validity when “extraordinary circumstances” exist.

These proposed rules are pending a comment period that ends on December 2, 2025.[22] Should these rules be implemented as proposed, there could be challenges under the APA. APA suits can be brought even when a party has not received an adverse PTAB decision. The likelihood of non-institution can be a sufficient injury for purposes of bringing a separate APA challenge. And an APA challenge can address not just deficiencies in the procedure taken to enact a rule, but also challenges to, e.g., whether the rule is contrary to a statute or the Constitution, or exceeds the agency’s rulemaking authority.[23]

Of all the proposed rules, the rule requiring a challenger to forgo all of its §§ 102 and 103 challenges in a parallel proceeding may be the most likely to be challenged. Section 315(e)(2) limits the estoppel arising from an IPR decision to “any ground that a petitioner raised or reasonably could have raised during that inter partes review.” The Federal Circuit recently held that this estoppel provision does not reach prior art grounds based on “product” or “system” art as opposed to grounds based on patents and printed publications.[24] But the rule change under the NPRM would require the petitioner to give up such challenges—well beyond what the AIA envisioned on the scope of IPR estoppel. That would appear to make the rule vulnerable to an APA challenge, given last week’s mandamus decisions. In one of the decisions accompanying Motorola, petitioners argued that “the Board violated separation of power principles by demanding they forgo invalidity grounds that would not otherwise be required by 35 U.S.C. § 315(e).”[25] As discussed above, the Federal Circuit dismissed this argument because the Board was simply evaluating factors to determine whether to institute—an unreviewable decision under § 314(d). But the proposed rule set forth in the NPRM is not part of any evaluation of institution factors; it is a requirement for institution. Whether the Federal Circuit will view this as distinguishable from Motorola and its other mandamus decisions remains to be seen.

[1] Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020).

[2] Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020).

[3] Motorola Sols., Inc. v. Stellar, Inc., IPR2024-01205, Paper 19 (PTAB March 28, 2025).

[4] In re Motorola Sols., Inc., __ F.4th __, 2025 WL 3096514, *4 (Fed. Circ. Nov. 6, 2025).

[5] Id. at *3.

[6] Id.

[7] Id. at *4.

[8] Id.

[9] Mylan Labs. Ltd. v. Janssen Pharmaceutica, N.V., 989 F.3d 1375 (Fed Cir. 2021).

[10] In re Motorola Sols., 2025 WL 3096514, at *4.

[11] Id.

[12] 5 U.S.C. §§ 701–706.

[13] In re Motorola Sols., 2025 WL 3096514, at *3, *5.

[14] Id. at *5.

[15] In re Google LLC et al., 2025 WL 3096849 (Fed. Cir. Nov. 6, 2025); In re SAP America, Inc., 2025 WL 3096788 (Fed. Cir. Nov. 6, 2025).

[16] Cuozzo Speed Techs. v. Commerce for Intellectual Prop., 579 U.S. 261, 275 (2016).

[17] Dabico Airport Sols. Inc. v. AXA Power ApS, IPR2025-00408, Paper 21 (PTAB Jun. 18, 2025).

[18] 35 U.S.C. § 321(c).

[19] Google, 2025 WL 3096849, at *2.

[20] See, e.g., Dabico Airport Sols., Paper 21 at 3.

[21] 90 FR 48335.

[22] The NPRM initially set a 30-day deadline for comments, but that was extended by 15 days on November 6, 2025.

[23] 5 U.S.C. § 706(2)(A)–(C).

[24] Ingenico Inc. v. IOENGINE, LLC, 136 F.4th 1354, 1367 (Fed. Cir. May 7, 2025).

[25] Google, 2025 WL 3096849, at *2.