The Federal Circuit Court of Appeals has denied a petition for a writ of mandamus filed by Motorola Solutions, Inc. The case centers around the Patent Trial and Appeal Board (PTAB) and the Acting Director of the United States Patent and Trademark Office (PTO), and involves the process of *inter partes* review (IPR) of patents. In essence, Motorola was trying to force the PTO to reinstate its initial decision to review certain patents, but the court said no.
Background of the Case
Motorola filed petitions for IPR, a process where the PTAB re-examines the validity of an already-issued patent, against Stellar, LLC’s patents. The PTAB initially agreed to review these patents. However, the Acting Director of the PTO later reversed that decision, stating that reviewing the patents would not be an efficient use of resources given the ongoing legal battles between Motorola and Stellar in district court.
Motorola then took issue with the Acting Director’s decision. They argued that the Acting Director violated procedural rules and their due process rights. They brought this case to the Federal Circuit Court of Appeals, asking for a “writ of mandamus.” A writ of mandamus is a court order that compels a government official to fulfill their duties.
The Heart of the Dispute: The Fintiv Factors and the Vidal Memorandum
The case revolves around the application of what are known as the “Fintiv factors.” These are a set of criteria the PTO uses to decide whether to institute an IPR when there are parallel proceedings in court. Basically, the PTO considers how much the court has invested in the case, the overlap of issues, and other factors to decide if it’s worth the PTO’s time to review the patent.
Adding complexity, the PTO had previously issued a memorandum called the “Vidal Memorandum.” This memo, issued in 2022, provided guidance on how to apply the Fintiv factors. It stated that the PTAB would not deny IPR based on parallel court litigation if the petitioner (in this case, Motorola) agreed to a “Sotera stipulation.” A Sotera stipulation means the petitioner promises not to raise the same arguments in the court case that they’re raising before the PTAB.
However, the Acting Director later rescinded the Vidal Memorandum. Motorola argued that this change in policy was improper and violated their rights.
The Court’s Decision: No Mandamus Relief
The Federal Circuit Court of Appeals sided with the PTO, denying Motorola’s petition for a writ of mandamus. The court explained that mandamus is an “extraordinary” remedy used only in very specific situations. To get a writ of mandamus, Motorola needed to prove that:
* They had a clear right to the relief they sought.
* They had no other way to get that relief.
* The court believed the writ was appropriate.
The court found that Motorola failed to meet these requirements.
Due Process Claims Rejected
Motorola argued that the Acting Director’s actions violated their due process rights, claiming they had a “constitutionally protected interest” in having their petitions considered without regard to the Fintiv factors. The court rejected this argument, stating that Motorola did not have a protected property right to have their petitions handled a certain way. The court noted that the Vidal Memorandum did not create a binding legal obligation and that the PTO maintained discretion in making its decisions.
The court also pointed out that Motorola was aware of the PTO’s precedent on discretionary denial when it filed its petitions. Even if Motorola had relied on the Vidal Memorandum, the court said that reliance alone doesn’t establish a constitutional violation.
APA Arguments Also Dismissed
Motorola also made arguments based on the Administrative Procedure Act (APA), claiming that the rescission of the Vidal Memorandum required a formal notice-and-comment rulemaking process. The court dismissed this argument as well. The court stated that Motorola could bring this challenge in a separate federal district court case and that it was effectively trying to bypass the rules that limit review of the PTO’s decisions. The court also said that the Acting Director’s actions were not arbitrary or capricious.
Implications of the Ruling
This ruling reinforces the PTO’s discretion in deciding whether to institute IPRs, especially when there are parallel court proceedings. It also highlights the high bar for obtaining a writ of mandamus. The court’s decision also underscores the importance of the Fintiv factors in the PTO’s decision-making process. The court’s ruling means that the PTO’s decision to not review Stellar’s patents stands, and Motorola’s efforts to overturn that decision have failed.