Gideon Korrell Explains Why the Court Rejected Motorola’s Mandamus Petition

On November 6, 2025, the U.S. Court of Appeals for the Federal Circuit denied Motorola Solutions’ request for a writ of mandamus in In re Motorola Solutions, Inc. As Gideon Korrell explains, the company had asked the court to overturn the USPTO’s decision to deinstitute eight inter partes reviews (IPRs) involving Stellar’s patents. The ruling highlights a consistent principle in patent law: institution decisions are largely within the Director’s discretion and are rarely open to court review.

Background: How the Dispute Developed

The case began with parallel litigation:

• Stellar sued Motorola in the district court in 2023 for patent infringement.
• Motorola responded by filing IPR petitions in 2024.
• Motorola included Sotera-style stipulations, agreeing not to raise the same invalidity arguments in court.

Initially, the Patent Trial and Appeal Board (PTAB) instituted review. However:

• Stellar requested Director Review.
• Meanwhile, USPTO policy shifted.
• Earlier guidance (the Vidal Memorandum) had discouraged denying IPRs when Sotera stipulations were present.
• In 2025, that guidance was rescinded.

After reconsidering the balance between PTAB review and ongoing court litigation, the Acting Director decided to reinstitute the IPRs.

The Mandamus Standard: A High Bar

Mandamus is not an ordinary appeal. It is a rare remedy used only in exceptional situations. To succeed, Motorola had to prove:

• A clear and indisputable right to relief
• No other adequate legal remedy
• That granting relief was appropriate

The court found Motorola failed on all three points.

A major obstacle was 35 U.S.C. § 314(d), which states that institution decisions are “final and nonappealable.” The court emphasized that mandamus cannot be used to bypass this rule. In simple terms, Motorola was trying to challenge something Congress has largely shielded from review.

Due Process Argument: No Protected Right

Motorola argued that the earlier USPTO guidance created a protected right. It claimed that by following the Sotera stipulation approach, it was entitled to avoid discretionary denial.

The court disagreed for several reasons:

• An IPR institution is inherently discretionary, not guaranteed.
• A temporary policy does not create a legal entitlement.
• Expectations based on guidance do not equal constitutional rights.

The court explained that due process protections apply only when there is a clear legal entitlement, not just a reasonable expectation. Since the USPTO retained discretion at all times, Motorola had no protected property interest.

The judges also rejected the idea that Motorola had a right to a specific process. Simply expecting a certain procedure does not create a constitutional claim.

APA Claims: Not the Right Path Here

Motorola also raised arguments under the Administrative Procedure Act (APA), including:

• The USPTO should have used notice-and-comment rulemaking before changing policy
• The policy change was arbitrary and failed to consider reliance interests

The court did not fully evaluate these claims. Instead, it focused on procedure:

• APA challenges can be brought in the district court
• Mandamus cannot be used to directly overturn institutional decisions

Allowing Motorola’s approach would effectively bypass § 314(d), which the court refused to permit. The judges made it clear that even creative legal framing cannot open a path that Congress intended to close.

Key Takeaways for Patent Litigants

This decision offers several practical lessons:

1. USPTO Discretion Remains Strong

Institution decisions are still firmly controlled by the Director. Courts rarely intervene.

2. Policy Guidance Can Change

Even widely relied-on guidance, like the Sotera framework, can be modified or withdrawn. Businesses should plan for uncertainty.

3. Constitutional Arguments Have Limits

Framing a dispute as a due process issue will not succeed without a true legal entitlement.

4. APA Challenges Must Be Filed Separately

If parties want to challenge USPTO policies, they may need to do so in district court, not through mandamus petitions tied to specific cases.

Final Thoughts

As Gideon Korrell explains, this case reflects a broader shift in how IPR strategy must be approached. Timing, policy changes, and administrative discretion now play a major role alongside legal arguments.

The Federal Circuit’s message is clear: institution decisions belong to the USPTO, and attempts to challenge them face steep barriers. For petitioners, mandamus remains a long shot, and careful planning is more important than ever.