In re Motorola Solutions, Inc. |Mandamus (PTAB institution decisions)

22/01/2026

Motorola Solutions’ petition arose amid a broader recalibration of PTAB discretionary practices following the rescission of Director Vidal’s “compelling merits” guidance. That guidance had functioned as a partial constraint on discretionary denials under § 314(a), especially in parallel-litigation contexts. Its withdrawal resulted in renewed uncertainty for petitioners whose IPR strategies were built around predictable institution thresholds.

Motorola argued that the PTO’s abrupt reversal effectively changed substantive rules governing access to IPR proceedings, without compliance with APA notice-and-comment requirements, and that de-institution decisions deprived petitioners of procedural fairness.

 

 

1) Whether mandamus is appropriate to review the Acting Director’s deinstitution decisions and alleged APA/due-process violations.

2) Whether the PTO’s change in guidance amounted to rulemaking requiring notice-and-comment.

    

 

The Federal Circuit rejected Motorola’s petition at the threshold. The Court reiterated that institution decisions under the America Invents Act are statutorily committed to the Director’s discretion and are, as a general matter, insulated from judicial review. Importantly, the Court emphasized that mandamus is an extraordinary remedy, available only where a petitioner shows a clear and indisputable right to relief and the absence of any alternative remedy.

On the APA argument, the Court declined to engage on the merits, observing that challenges to PTO policy changes—particularly those framed as unlawful rulemaking—must be brought through a proper APA action in district court, rather than through mandamus tied to individual PTAB proceedings.

 

 

This ruling entrenches executive control over PTAB gatekeeping. For petitioners, the decision underscores that institution uncertainty is not a temporary anomaly but a structural feature of the post AIA regime. From a strategic perspective, companies must now treat PTAB filings as probabilistic tools rather than guaranteed forums, particularly in high value disputes.

For patent owners, the decision strengthens defensive leverage at the institution stage. The Director’s discretion—largely immune from appellate correction—has become a powerful policy lever capable of shaping patent enforcement outcomes industry wide.

Nandini Kohli