The Patent Trial and Appeal Board’s (“PTAB’s”) authority to exercise discretion over whether to institute Inter Partes Review (“IPR”) proceedings has become one of the most consequential features of post-grant practice before the United States Patent and Trademark Office (“USPTO”).¹ Since the Federal Circuit’s decision in Apple Inc. v. Fintiv, Inc.², the PTAB has applied a multifactor balancing test to determine whether to deny institution when parallel district court litigation is pending. The scope of this discretion has shifted with changes in USPTO leadership, producing alternating periods of predictability and uncertainty for patent challengers and owners. This tension came to a head in February 2025 when Acting Director Coke Morgan Stewart rescinded the Vidal Memorandum—which had previously constrained discretionary denials—and introduced a new interim process to manage PTAB workload that effectively restored broader discretion over institution decisions.³

The Federal Circuit’s decision in In re Motorola Sols., Inc.⁴ represents the first major judicial response to these shifts. The case examined whether applying the rescission to pending petitions violated the Due Process Clause or the Administrative Procedure Act (“APA”). In rejecting Motorola’s petition, the Court reaffirmed that institution decisions for IPRs are “final and nonappealable” and clarified the narrow scope of judicial review via mandamus. In re Motorola Sols., Inc. illustrates how shifting administrative guidance continues to shape predictability, fairness, and flexibility in modern patent adjudication.

In 2019 and 2020, USPTO Director Andrei Iancu designated two cases⁵ as precedential and established a multi-factor discretionary standard called the Fintiv factors⁶ for determining whether the agency should deny institution of IPR in situations where there is a concurrent proceeding co-pending in a district court.

On June 21, 2022, Director Kathi Vidal issued the “Vidal Memorandum” that provided interim guidance to the PTAB for how to apply the Fintiv factors while the agency explored rulemaking.⁷ The guidance provided that the PTAB would not discretionarily deny any petition that included a so-called Sotera stipulation, which required the Petitioner to agree not to pursue in the parallel district court litigation any invalidity grounds that were raised, or reasonably could have been raised, in the IPR.⁸

Following a change in the presidential administration, Acting Director Coke Morgan Stewart rescinded the Vidal Memorandum on February 28, 2025.³ Less than a month later, Stewart issued guidance to the PTAB where she instructed: (1) that the rescission applies to any case in which the PTAB has not issued an institution decision, or where a request for rehearing or Director Review of an institution decision was filed and remains pending; (2) that the PTAB not consider a Sotera stipulation as “dispositive” but rather as “highly relevant”; and (3) that the PTAB “consider timely requests for additional briefing on the application of the Interim Procedure’s rescission on a case-by-case basis.”⁹ The February 28 rescission effectively restored a more discretionary institution regime, heightening the risk of discretionary denials, diminishing reliance on the Vidal safe-harbor provisions, and materially altering the strategic calculus for both petitioners and patent owners.

On March 26, 2025, the Acting Director issued a memorandum establishing a new interim process for managing the PTAB’s workload.¹⁰ This process, inter alia, bifurcated the PTAB’s institution process by separating discretionary denial review from the merits phase, which increased the Acting Director’s direct oversight of institution decisions and introduced earlier, standalone consideration of discretionary factors that could terminate proceedings before reaching the merits.¹¹

In August 2023, Stellar, LLC (“Stellar”) sued Motorola in district court alleging infringement of eight patents.¹² While that case was pending, Motorola filed two rounds of IPR petitions—both accompanied by Sotera stipulations limiting its invalidity defenses in the parallel case.¹³ The PTAB instituted both sets of petitions, prompting Stellar to seek Director Review.¹⁴ In March 2025, the Acting Director vacated institution of the first set under the Fintiv factors, finding that the PTAB had undervalued the investment in the district court proceedings and overemphasized Motorola’s Sotera stipulation.¹⁵ Motorola moved for reconsideration, asserting that the deinstitution reflected impermissible rulemaking and retroactive application of new policy in violation of the APA and due process.¹⁶

On May 23, 2025, the Acting Director denied reconsideration of the first set of petitions and, after granting Director Review of the second, likewise vacated those institutions.¹⁷ She reasoned that further review would inefficiently duplicate the parallel litigation and emphasized that the February 2025 guidance rescinding the Vidal Memorandum was not being applied retroactively because no final institution decision had issued.¹⁸ The Acting Director also noted that Motorola had declined the opportunity to submit additional briefing under the interim guidance.¹⁹

Motorola petitioned for a writ of mandamus challenging the Acting Director’s rescission of the Vidal Memorandum and the subsequent application of that rescission as contrary to the procedural requirements and protections of the APA.²⁰ Motorola further contended that applying the rescission under these circumstances violated its due process rights.²¹

As relief, Motorola asked the Court to direct the USPTO to vacate the Acting Director’s rescission of the Vidal Memorandum and to reinstate the PTAB’s institution decisions in accordance with the prior guidance.²²

On review of Motorola’s petition, the Court began by emphasizing that mandamus is “a drastic remedy, to be invoked only in extraordinary situations,” requiring the petitioner to demonstrate a “clear and indisputable” right to relief and the absence of adequate alternative means to obtain it.²³ The Court reiterated that the Director’s discretion to institute IPRs is “final and nonappealable” and that mandamus is generally unavailable to review institution decisions, including those based on Fintiv factors.²⁴

While the Court acknowledged limited exceptions for “colorable constitutional claims,” it quickly observed that no such claims had been presented in Motorola’s petition.²⁵ Against this backdrop, the Court proceeded to consider the merits of Motorola’s claims under the Due Process Clause and the APA.

• a. Motorola’s Due Process Argument: No Property Interest in an IPR or in Sotera-based Safe Harbors

To invoke the Due Process Clause, a claimant must identify a specific right or interest that gives rise to a legitimate claim of entitlement. However, no property right exists in the institution of an IPR because the statute commits that decision to the discretion of the Director.²⁶ Motorola’s relief was premised on the argument that the Vidal Memorandum created a “constitutionally protected interest” to avoid the Fintiv factors by providing a Sotera stipulation.²⁷ But the Court found this argument to be unpersuasive for two reasons.

First, the Court noted that its precedent draws a distinction between applications for discretionary benefits and those for non-discretionary benefits, where the law requires a specific outcome if the applicant meets the prescribed eligibility criteria.²⁸ While non-discretionary benefits can create a property interest protected by the Due Process Clause, the Court observed that the Vidal Memorandum did not revoke the USPTO’s discretion.²⁹ It did not compel the PTAB to grant any petition; it only instructed the PTAB not to rely on certain criteria to deny review, and even then, only until further notice from the USPTO.³⁰

Second, the Court stated that Motorola has not shown that its claimed property interest, an entitlement to have its petitions considered on the merits without risk of discretionary denial due to parallel district court proceedings, is protected by the Due Process Clause.³¹ The Court relied on Mylan for rejecting a similar claim where the PTAB denied an IPR based on parallel litigation to which the petitioner was not a party.³² The Court held that the petitioner had no constitutional “right for its petition to be considered without reference to” that litigation, and no right to an IPR itself.³³ Similarly, the Court stated that there is no historical or traditional basis for recognizing a constitutional right to have the PTAB consider Motorola’s petitions without regard to the Fintiv factors, even if Motorola has stipulated not to raise those challenges in the parallel district court proceedings.³⁴

The Court also saw no due process violation in the Acting Director’s application of the rescission of the Vidal Memorandum to Motorola’s petitions.³⁵ Motorola faced no unfair surprise here. It was aware of the PTAB’s precedent on discretionary denial when it filed its petitions and knew that interim guidance regarding Sotera stipulations could be modified at any time.³⁶ Even if Motorola relied on the Vidal Memorandum when filing its petitions, such reliance alone does not establish a constitutional violation.³⁷ Furthermore, the Court stated that rescission did not limit Motorola’s ability to raise patentability defenses elsewhere, as the Sotera stipulation only restricted challenges in the IPR context.³⁸

• b. Motorola’s APA Argument: Rescission of the Vidal Memorandum Is Not Reviewable Through Mandamus

Motorola first contended that the rescission of the Vidal Memorandum represented a change in law or policy that should have been subject to notice-and-comment rulemaking.³⁹ The Court noted, however, that Motorola had an available avenue to raise this claim through a federal district court APA action.⁴⁰ Despite this, Motorola sought mandamus relief to “vacate the Rescission and the Acting Director’s vacatur of the Board decisions instituting IPRs,” arguing that an independent APA lawsuit would not provide meaningful relief.⁴¹ The Court viewed this request as an attempt to bypass § 314(d)’s bar on review.⁴²

The Court relied on Mylan, in which the petitioner sought review of the PTAB’s denial of institution based on the Fintiv factors, arguing that the PTO exceeded its authority by failing to implement the standard through notice-and-comment rulemaking.⁴³ The Court dismissed Mylan’s appeal and denied mandamus, holding that the petitioner’s argument that the PTAB acted beyond its powers could not justify mandamus relief.⁴⁴ Applying the same reasoning, the Court found no basis to reach a different outcome for Motorola’s challenge to the denial of institution based on the process of the Acting Director’s rescission.⁴⁵

The Court also rejected Motorola’s reliance on Apple, noting that in that case it held § 314(d) did not bar a challenge to whether the PTO complied with APA notice-and-comment requirements, apart from the reviewability of a specific institution decision.⁴⁶ Motorola’s situation, the Court concluded, falls outside that narrow context.⁴⁷

Motorola also argued that the Acting Director acted arbitrarily and capriciously in applying the rescission, claiming she failed to explain the change or properly consider reliance interests created by the June 2022 Memorandum.⁴⁸ The Court, however, treated these arguments as non-reviewable under § 314(d), reasoning that they ultimately challenge the Director’s discretionary decision to deny institution, including the weighing of relevant factors, and do not fall within the narrow category of non-constitutional challenges to the factors themselves.⁴⁹

With discretionary denials now reaching unprecedented levels, the Federal Circuit’s decision in In re Motorola Sols., Inc. underscores the breadth of the USPTO Director’s authority over IPR institution decisions and the narrow scope of judicial review in this area. In the wake of the Vidal Memorandum’s rescission and the rollout of new interim procedures for PTAB workload management, the Court reaffirmed that neither the APA nor the Due Process Clause provides a vehicle to challenge the Director’s discretion regarding institution. The Court further clarified that allegations of procedural irregularities or retroactively applied policy changes are insufficient to overcome 35 U.S.C. § 314(d)’s bar on review.

Ultimately, In re Motorola Sols., Inc. demonstrates that the post-Vidal landscape has returned to a more flexible, discretionary regime that affords the Director significant latitude to manage PTAB proceedings, limit petitioners’ reliance on prior guidance such as Sotera stipulations, and signals that judicial intervention in institution decisions will remain exceedingly rare.