On November 6, the Federal Circuit in In re Motorola Solutions, Inc. denied Motorola’s request for mandamus and held that the USPTO Director’s decisions denying or de-instituting inter partes review (IPR) are unreviewable under 35 U.S.C. § 314(d), rejecting due process and APA challenges to rescission of prior guidance.
The Federal Circuit reaffirmed the near absolute bar on judicial review of PTAB institution decisions. Motorola sought mandamus after the Acting Director rescinded the 2022 Fintiv/Sotera guidance, and retroactively applied new discretionary denial criteria, resulting in the de institution of eight IPRs. The Sotera guidance provided that the PTAB would generally not discretionarily deny institution in view of parallel district court litigation if the petitioner submitted a Sotera stipulation agreeing not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.
Motorola argued that this abrupt policy shift violated the Administrative Procedure Act (APA) and due process, asserting reliance on prior guidance and claiming a property interest in maintaining instituted reviews. The Federal Circuit disagreed explaining that § 314(d) renders institution determinations “final and nonappealable,” and Supreme Court precedent (Cuozzo, Thryv) forecloses review even when petitioners frame objections as APA or constitutional claims. The Federal Circuit found no protected property interest in IPR institution and held that revising internal guidance does not trigger notice and comment obligations because such memoranda are not legislative rules. The panel emphasized that mandamus cannot serve as a backdoor to challenge discretionary decisions or policy changes, even when applied to pending cases.
This decision underscores the USPTO Director’s sweeping authority over institution and signals that petitioners cannot rely on prior guidance as a safe harbor. For practitioners, IPRs should not be assumed as guaranteed components of a litigation strategy, and petitioners should file early, and develop robust invalidity defenses for district court. Patent owners, conversely, can leverage parallel litigation progress and efficiency arguments to encourage discretionary denial. Both sides should recognize that Director Review is now a critical gatekeeper, and appellate recourse is extremely limited.
For more information on this topic, please contact Fitch Even partner Steven M. Freeland, author of this alert.
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Steven M. Freeland
Steven M. Freeland practices in all areas of intellectual property law, focusing primarily on the development, protection, and management of intellectual property. Steve assists clients with sophisticated patent portfolio management and the prosecution of complex patents, helping them to manage their patent assets using strategies tailored to further their business objectives.