In re Motorola Solutions, Inc., Appeal No. 2025-134 (Fed. Cir. Nov. 6, 2025)

Our case of the week is one of a series of cases challenging newly-enacted procedures by the Trump Administration that are having a significant effect on the inter partes review regime set up by the America Invents Act.  In a sign that the Federal Circuit may not interfere with the overhauling of the IPR system, the Federal Circuit denied a mandamus petition.

The America Invents Act established a new procedure for parties to challenge the validity of patents: the inter partes review.  That procedure has been wildly successful for patent challengers—especially those who have been accused of patent infringement.  Rather than litigate a case for years in the federal court system, an accused infringer can seek a finding that the patent is invalid from a panel of three judges at the Patent Office in a process that is faster and less expensive than in federal court, has a lower burden of proof, and does not involve the same level of uncertainty as having a case decided by a jury.  Over the past twelve years, thousands of petitions for inter partes review have been filed, and thousands of patents have been found invalid.

But one does not have a right to an inter partes review.  Congress included a degree of discretion in the statute, giving discretion to the Director of the Patent Office whether to review the patent.  Historically, the Director of the Patent Office has delegated that authority to the cohort of judges who ultimately rule on the cases.  In time, the Patent Office has developed certain guideposts for evaluating whether to grant review.  For example, if a party files a petition for review shortly before a trial on the same issues is scheduled to take place in the district court, the Patent Office is less likely to grant review—doing so would be inefficient and a waste of resources.  These guiding principles have been captured in a couple of decisions identified as “precedential” by the Patent Office.

Enter the Trump administration.  Upon the departure of the prior Director, the President appointed Coke Morgan Stewart as Acting Director, and ultimately appointed John Squires as Director.  The two of them have substantially altered the settled expectations of the IPR system.  Acting Director Stewart first, and Director Squires since, have elected to personally review all petitions, and to use their own discretion in evaluating whether to grant them, applying new factors, and substantially altering the weight previously placed on factors used by the Patent Office.   In short, they have been denying petitions at a substantial rate.  For example, on one day in October, Acting Director Steward referred 19 petitions for review and denied 21 petitions.  In his first review of his own, Director Squires rejected 13 petitions, providing no explanation for his decision.

Technology companies—those that most benefited from the IPR process—have grown concerned.  Several have filed mandamus petitions seeking to have those decisions reversed.  In each of three decisions issued Thursday this week, the Federal Circuit denied mandamus review.  In addition to our Case of the Week, mandamus was also denied in In re SAP America, Inc., Appeal Nos. 2025-132, 2025-133 (Fed. Cir. Nov. 6, 2025) (nonprecedential), and In re Google LLC, Appeal No. 2025-144 (Fed. Cir. Nov. 6, 2025) (nonprecedential), the latter case also involving Samsung.

The Motorola case had the most extensive analysis.  In summary, however, the Court found no due process violation in changing the procedures, and noted that granting a petition for review was always subject to discretion.  The Court also found that Motorola’s mandamus petition effectively sought an end run around a statutory bar on appellate review of the denial of a petition for inter partes review.  And to the extent Motorola argued that the change in procedures at the Patent Office amounted to improper rulemaking in violation of the Administrative Procedures Act, it should proceed with filing a lawsuit pursuant to that Act.

In the meantime, the Federal Circuit shows no sign of affecting the discretionary denials by the new Director.  This could have a substantial impact on the IPR system because the IPR system requires a substantial front-end investment in drafting and filing the petition.  The filing fee alone is more than $20,000, and the legal and expert fees necessary to prepare the petition often cost in excess of $100,000—or even hundreds of thousands of dollars.  With the not-insignificant likelihood that the petition will be discretionarily denied, parties will be less likely to spend that money, reverting the patent system to where it was prior to the America Invents Act.

The opinion can be found here.

By Nika Aldrich

This article summarizes aspects of the law and does not constitute legal advice. For legal advice with regard to your situation, you should contact an attorney.