Federal Circuit Upholds Director Deinstitution Despite Sotera Stipulation

In In re Motorola Solutions, Inc., No. 2025-134 (Fed. Cir. Nov. 6, 2025), the Federal Circuit rejected Motorola’s request for mandamus relief after the USPTO rescinded prior guidance on discretionary denials of inter partes review (IPR) and deinstitituted two Motorola IPRs.

Since 2020, when deciding whether to exercise discretion to institute IPRs when there are parallel proceedings in another court, the USPTO has considered factors set forth in its precedential decision Apple Inc. v. Fintiv, Inc., No. IPR2020-00019, 2020 WL 2126495 (PTAB Mar. 20, 2020). On June 21, 2022, the UPSTO Director issued interim guidance, specifying that an IPR would not be discretionarily denied based on parallel litigation if the Petition offered a so-called Sotera stipulation. Such a stipulation gives up all invalidity arguments in district court that could have been raised in the IPR. But in early 2025, the new Acting Director rescinded the interim guidance, and issued new guidance, which instructed the USPTO to treat Sotera stipulations as “highly relevant” rather than “dispositive.”

Following that new guidance, the Acting Director deinstituted two Motorola IPRs that had been instituted based on Sotera stipulations. Motorola then petitioned the Federal Circuit for mandamus relief, arguing that this decision violated constitutional due process rights and violated the Administrative Procedure Act (APA).

Motorola contended the 2022 interim guidance on Sotera stipulations created a constitutionally protected interest in having its petitions considered without regard to the Fintiv factors. The Court disagreed, finding that Supreme Court precedent distinguished non-discretionary benefits that create protected property interests under Due Process from discretionary benefits that do not. It ruled that Motorola does not have a right to have its petition considered without reference to parallel district court proceedings. And it found Motorola’s expectation of receiving certain process—i.e., that the USPTO would follow its interim guidance—is not an interest protected by the Due Process Clause.

Motorola also made two APA arguments: first, that the rescission of the interim guidance required notice-and-comment rulemaking; second, that the rescission was arbitrary and capricious. The Court rejected both arguments, explaining that each argument was an attempt to avoid the 35 U.S.C. § 314(d) bar on review of IPR institution decisions. Because Motorola could pursue its APA claims in federal district court, the Court held that mandamus was inappropriate.