by Dennis Crouch
In re Maplebear Inc. (d/b/a Instacart), No. 26-105 (Fed. Cir., petition filed Oct. 21, 2025), adds another voice to the chorus of technology companies asking the Federal Circuit to rein in the Patent Office’s increasingly restrictive approach to IPR institution. The mandamus petition was filed a few days after the USPTO published a Notice of Proposed Rulemaking (NPRM) that further curtails access to inter partes review (IPR) proceedings, and argues that the denial of its institution was improperly based upon grounds not supported by the statutory framework. The petition argues that Dir. Stewart’s novel denial criteria were imposed without the notice-and-comment rulemaking required by the Administrative Procedure Act, exceed the Director’s statutory authority under 35 U.S.C. § 314(a), and were applied retroactively to Instacart’s petition in violation of due process. The petition argues that the NPRM is tacit admission of the rulemaking requirement.
The Maplebear case is the seventh mandamus on the same issue — arguing that the USPTO’s broadened discretionary denial approach is ultra vires. (SAP, Motorola , Google, Samsung, HighLevel, SanDisk, Western Digital, Cambridge Industries, and now Instacart). These petitions are all sitting before the Federal Circuit – none have been decided yet. The wave began after Acting Director Coke Morgan Stewart rescinded former Director Kathi Vidal’s June 2022 guidance memoranda, which had provided “safe harbors” for petitioners who stipulated not to pursue the same prior art in parallel litigation (so-called Sotera stipulations). Following that rescission, the PTAB expanded its use of discretionary denials based on expanded Fintiv factors, which balance whether to institute IPR when parallel district court litigation is pending. But then the policy shift went well beyond Fintiv with Acting Director Stewart introducing two additional discretionary denial grounds through individual PTAB decisions rather than formal rulemaking.
- Settled expectations: IPR petitions are denied if the challenged patent had been in force for several years (roughly seven+ years in practice), on the theory that patent owners develop stronger reliance interests as their patents age.
- Roadmapping: IPRs were denied if any prior party (related or unrelated to the current petitioner) had previously challenged the same patent, on the theory that later petitioners would impermissibly benefit from the roadmap provided by earlier proceedings.
These two factors represented a dramatic departure prior IPR practice with the result of hundreds of IPR institution denials.
In Instacart’s case, Acting Director Stewart denied institution based on multiple discretionary factors. The decision emphasized that the challenged patent had been in force for approximately nine years, creating “settled expectations” for the patent owner, and Petitioner failed to provide persuasive reasoning why an IPR would be an appropriate use of Board resources. The Director also invoked the “roadmapping” concern, noting that the patent had been subject to multiple prior Board proceedings, including a previous IPR challenging the same claim 7 where Starbucks had unsuccessfully argued obviousness over the same prior art references (Barbosa and Falls). Critically, the Director found that Instacart’s admission that its petition “squarely addresses the deficiency identified by the Board in the prior IPR challenging claim 7” raised concerns of impermissible roadmapping. Additionally, the decision cited Fintiv factors, noting that parallel district court litigation involving the patent owner and Instacart’s customers had a July 2026 trial date, making it unlikely the IPR would conclude before trial, risking duplication of effort and inconsistent decisions. While the decision stated the denial was “based on a holistic assessment of all of the evidence and arguments presented,” the settled expectations and roadmapping rationales featured prominently in the analysis.
Maplebear’s petition raises similar challenges to those in the other pending mandamus actions, but focuses in on the requirement for APA notice-and-comment rulemaking under 5 U.S.C. § 553 before implementation. An agency generally cannot impose substantive requirements of general applicability through adjudication or policy statements alone. One difference in this case is that the USPTO has now begun the rulemaking process with its October 17, 2025 NPRM which would codify certain discretionary denial practice. The petition uses this as evidence that the agency recognizes these policies are legislative rules.
In my view, the October 17, 2025 NPRM adds another dimension to this dispute. Proposed 37 C.F.R. § 42.108(d) would prohibit institution unless each petitioner stipulates that neither it nor its real parties in interest will raise §§ 102 or 103 invalidity arguments regarding the challenged patent in any other proceeding. This becomes a Sotera+++ stipulation and move from optional to mandatory and apply to future not-yet-filed litigation. Proposed § 42.108(e) would prohibit institution where claims of the challenged patent (or a parent independent claim) have previously been found not invalid or not unpatentable in a prior proceeding. This expands the the roadmapping concept applied in Maplebear: it would create immunity from IPR challenge for any claim that survived one prior validity challenge, regardless of whether the current petitioner was involved in that challenge or is raising different prior art. Proposed § 42.108(f) would prohibit institution if it is more likely than not that a parallel trial would occur before IPR FWD. This essentially codifies the Fintiv timing analysis as a categorical bar rather than a discretionary factor. What the NPRM conspicuously omits is any mention of “settled expectations” or patent age as a basis for denial. The proposed regulations contain no age-based bar, no temporal restriction, and no reference to the patent owner’s reliance interests increasing over time. This omission is striking given that settled expectations has been one of the most frequently applied discretionary denial grounds in 2025.
The relationship between the NPRM and the pending mandamus petitions cuts in two directions. First, as Maplebear argues, the fact that the USPTO is now proposing formal regulations demonstrates the agency’s recognition that these policies are legislative rules requiring APA process. The decision to pursue rulemaking is an implicit admission that the prior method (imposing these requirements through adjudicatory decisions and Director orders) was procedurally defective.
Second (and more consequential in my opinion) the NPRM shows an expansion of practice — that Director Squires is not retreating from the restrictive approach to IPR institution but rather doubling down. The proposed rules would convert discretionary factors into categorical requirements and add new mandatory bars that operate independently of the informal factors.
Although the proposed rules did not control the Maplebear denial, their existence shows the ongoing importance of the issue.