Federal Circuit Denies Petition Challenging Patent Office Director Decisions
The Federal Circuit has denied Motorola's petition for mandamus relief challenging decisions by the former US Patent and Trademark Office (USPTO) director.
The case is In Re Motorola Solutions, Inc.
As the court summarized,
At the request of Motorola Solutions, Inc., the Patent Trial and Appeal Board instituted inter partes review (IPR) of Stellar, LLC’s patents. But on review, the then-Acting Director of the United States Patent and Trademark Office (PTO) deinstituted the IPRs, concluding such review would not be an efficient use of resources given the ongoing parallel district court proceedings between the parties involving the patents. Motorola now petitions this court for mandamus relief, arguing that the Acting Director violated certain procedural protections guaranteed by the Administrative Procedure Act (APA) and the Due Process Clause of the Fifth Amendment to the Constitution in doing so.
As the court explained, in chapter 31 of Title 35 of the U.S. Code, Congress established a process for IPR of an issued patent.
Given “the likelihood of parallel pending proceedings in the PTO and in the courts,” and inefficiencies that could result from both the PTO and the courts deciding overlapping issues at the same time, Congress imposed certain safeguards. For example, a petition must be filed within one year of service of an infringement suit brought by the patent owner or real party in interest.
Otherwise, Congress gave the USPTO and the courts discretion to resolve such issues.
The director of the USPTO is tasked with determining whether to institute IPR.
The standard to be used by the USPTO to determine whether to deny institution of IPR in situations where there are pending parallel court proceedings is based on the “Fintiv factors,” which include:
- “whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted”;
- “proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision”;
- “investment in the parallel proceeding by the court and the parties”;
- “overlap between issues raised in the petition and in the parallel proceeding”;
- “whether the petitioner and the defendant in a parallel proceeding are the same party”; and
- “other circumstances that impact the Board’s exercise of discretion, including the merits.”
In June 2022, then-Director of the USPTO Katherine K. Vidal issued a memorandum providing interim guidance to the Patent Trial and Appeal Board (PTAB or Board) on applying the Fintiv factors while the USPTO explored potential rulemaking.
Under that memo, the Board would not “discretionarily deny institution in view of parallel district court litigation where a petition presents” a so-called Sotera stipulation: “a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the [Board].”
After President Trump returned to office in 2025, the Acting Director of the USPTO rescinded the Vidal memo.
In August 2023, Stellar filed suit against Motorola alleging infringement of claims of eight patents. While that court case was pending, Motorola filed a first set of petitions seeking to institute IPR in July 2024 and a second set in August 2024.
Motorola filed a Sotera stipulation stating that, should IPR be instituted, it would not pursue, in the parallel civil litigation, any ground for unpatentability that it raised or could reasonably have raised in the IPRs.
The Board initially instituted IPRs on both sets of petitions, prompting Stellar to seek review by the USPTO director.
In response, Motorola argued that the institution was consistent with Board precedent.
But on March 28, 2025, the Acting Director de-instituted the first set of IPRs based on the Fintiv factors, concluding that the “Board did not give enough weight to the investment in the parallel proceedings and gave too much weight to Petitioner’s Sotera stipulation.”
Motorola then moved for reconsideration, arguing that the Acting Director’s actions “amount[ed] to improper rulemaking or a change in policy” and the “retroactive” application of the recission violated “the APA and [Motorola’s] due-process rights.”
In May 2025, the Acting Director: (1) denied Motorola’s motion for reconsideration on the first set of petitions and (2) granted Director Review on the second set of petitions and de-instituted the IPRs, having found it would be an inefficient use of agency resources given the civil action.
Motorola then sought mandamus, asking the court to direct the USPTO to vacate the Acting Director’s rescission of the Vidal Memorandum and to reinstate the Board’s institution of its petitions in accordance with that guidance.
The Federal Circuit noted that the Due Process Clause of the US Constitution provides that no person “shall be . . . deprived of life, liberty, or property, without due process of law.”
Said the court,
Motorola does not claim any rights in the institution of IPR of the challenged patents itself, nor could it: “[W]hen a statute leaves a benefit to the discretion of a government official, no protected property interest in that benefit can arise.”
The court rejected Motorola’s argument that the Vidal Memorandum created a “constitutionally protected interest” in having its petitions considered without regard to the discretionary Fintiv factors.
Also, said the court,
We likewise see no due process violation by the Acting Director applying the rescission of the Vidal Memorandum to the petitions. To be sure, “[e]lementary considerations of fairness dictate that individuals should have an opportunity to know what the law is and to conform their conduct accordingly.” Landgraf v. USI Film Prods., 511 U.S. 244, 265 (1994). But even if those principles are applicable to this context, Motorola did not experience anything close to the kind of unfair surprise that might raise a due process violation.
Further,
Motorola was aware of the Board precedent on discretionary denial when it filed its petitions, and was on notice that the interim guidance on how to apply that precedent in cases where a party provides a Sotera stipulation could be modified at any time.
Even if Motorola relied on the Vidal Memorandum when it undertook the expense of filing the petitions, that “reliance alone is insufficient to establish a constitutional violation,” said the court.
