USPTO Discretionary Denials and Mandamus: In re Motorola Solutions

After the Patent Office changed how it decides whether to institute inter partes review, petitioners turned to the Federal Circuit. In November 2025 the court held the writ unavailable.

The Federal Circuit is the most frequent issuer of mandamus in patent litigation, mostly in transfer disputes. In 2025 a different kind of petition arrived: challenges to decisions of the U.S. Patent and Trademark Office refusing, or withdrawing, institution of inter partes review (IPR). In In re Motorola Solutions, Inc., No. 2025-134 (Fed. Cir. Nov. 6, 2025), a precedential order, the court denied the writ.

The background

Inter partes review lets a third party ask the Office to reconsider the patentability of issued claims. Institution is discretionary, and under 35 U.S.C. § 314(d) the decision whether to institute is "final and nonappealable". For several years, a 2022 memorandum limited the use of discretion to deny institution where parallel litigation was pending. On February 28, 2025, the Office rescinded that memorandum and began applying different criteria, including to petitions already filed. Some petitions were denied and some instituted proceedings were withdrawn.

The decision

Motorola argued that applying new criteria to its pending proceedings violated due process and the Administrative Procedure Act. The court rejected both theories. It held that a petitioner's expectation that the Office would follow its earlier guidance is not an interest protected by the Due Process Clause, and that guidance documents of this kind are not legislative rules requiring notice and comment. It also relied on the Supreme Court's decisions in Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. 261 (2016) and Thryv, Inc. v. Click-To-Call Technologies, LP, 590 U.S. 45 (2020), which give § 314(d) broad effect, to conclude that mandamus is ordinarily unavailable to review institution decisions. Mandamus cannot be used to obtain indirectly the review that the statute forbids directly. To the extent Motorola's APA theories were genuinely distinct, the court observed that they could be pursued in district court, which is itself a reason to deny the writ.

On the same day the court denied two other petitions, In re SAP America, Inc. and In re Google LLC, in nonprecedential orders, and it denied further petitions in December 2025 on similar reasoning.

What the decision shows about the writ

• A statutory bar defines the "clear right". Where Congress has made a decision "final and nonappealable", a petitioner cannot show a clear and indisputable right to review of it, a point consistent with the rule that mandamus is not a substitute for appeal.
• Another forum defeats the writ. If a claim can be brought in district court under the APA, that route is an adequate alternative remedy. The same reasoning appears in immigration delay cases, where the choice between counts is discussed in APA Delay vs. Mandamus.
• Changing guidance is not, by itself, a legal error. An agency that rescinds guidance and applies new criteria may face an APA challenge, but not one that a court of appeals will resolve by writ.

For the earlier transfer cases that made the Federal Circuit's mandamus docket prominent, see Mandamus in the Federal Circuit.

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