A Federal Circuit panel today denied a mandamus petition challenging the discretionary withdrawal of institution decisions made by the Patent Trial and Appeal Board (PTAB). The In re Motorola Solutions, Inc. order ended a petition but likely opened another door via an Administrative Procedure Act (APA) action. In its petition, Motorola sought appellate mandamus relief requiring the PTAB to re-institute inter partes review (IPR) trials on two sets of petitions seeking review of eight patents asserted against Motorola in an action brought by Stellar, LLC. The PTAB instituted IPRs on both sets of petitions. In each set, Motorola provided a Sotera stipulation, confirming that it would not pursue bases for invalidity it raised or reasonably could have raised in the IPRs. 

After institution of the first set of petitions, Stellar sought Director Review. The acting director reconsidered the Fintiv factor analysis of the PTAB panel and determined that too little weight was given to the amount of effort expended in the litigation and too much weight was given to the Sotera stipulation. Motorola moved for reconsideration, arguing that the deinstitution of the first set of petitions amounted to improper rulemaking or a change In policy and the retroactive application of the recission violated the APA and Motorola’s due process rights. The acting director denied the motion for reconsideration and also deinstituted the second set of petitions for the same reasons. Motorola then sought mandamus.

The Court first analyzed the standard of a mandamus petition, noting that the remedy of mandamus is “a drastic one.” (Slip op. at 6). To obtain mandamus, a petitioner must show a clear and indisputable right to relief and lack adequate alternative means to obtain the relief it seeks. Moreover, the courts have discretion to determine whether the writ is appropriate given the circumstances.

Starting with 35 U.S.C. § 314(d), the Court noted its prior holdings that mandamus is ordinarily unavailable for institution decisions. While an avenue for appeal may exist for “colorable constitutional claims,” the panel found that no such claims existed in the present case. (Slip op. 6-7).

Examining the challenged “right to relief,” the Court noted that Motorola’s basis for a property right existed in a rescinded memo from former Director Vidal on application of the Fintiv factors by the PTAB. Motorola claimed that proper application of the factors as set forth in the memo had resulted in institution and, once instituted, the Director had no further discretion to use. The Court rejected Motorola’s argument. Instead, it characterized the Vidal memo as a discretionary application of factors rather than an application mandating a specific outcome. Further, the Court stated that Motorola had not shown that the interest it claimed in the application of the Vidal memo is protected under the Due Process Clause. The Court also noted that the request was really one for a particular type of process, but that prior Supreme Court precedent directed that the ”expectation of receiving [certain] process is not, without more” an “interest protected by the Due Process Clause.” Olim v. Wakinekona, 461 U.S. 238, 250 & n. 12 (1983). 

Turning to the arguments under the APA, the Court dispatched Motorola’s argument that the recission of the Vidal memo effected a change in law or policy without proper notice-and-comment rulemaking, holding that the argument was nothing more than an end-run around the § 314(d)’s bar on review. The Court noted that Motorola could bring an APA action to raise this challenge. Finally, the Court held that the argument that failing to give notice of the change in policy was arbitrary and capricious was the kind of argument that was not reviewable in light of § 314(d).

The Motorola case reflects the almost total bar to review of institution decisions, very much as contemplated when Congress included § 314(d) as part of the statute.  While the mandamus door looks to be closed, the Court admits that an avenue may exist through an APA action to challenge the overall policy change and effectuate the sought relief.