by Dennis Crouch
Three new mandamus petitions recently arrived at the Federal Circuit, each attempting to navigate around the court’s November 6 decisions that rejected challenges to the USPTO’s expanded use of discretionary denials.
- In re Google LLC (No. 26-111),
- In re Intel Corporation and Lenovo (No. 26-113), and
- In re Kangxi Communication Technologies (No. 26-115)
The new petitions raise arguments their counsel contend are distinct from those already rejected in In re Motorola Solutions, Inc., No. 2025-134 (Fed. Cir. Nov. 6, 2025) (precedential). The petitions challenge both the “settled expectations” rule and parallel proceeding denials, while advancing novel theories designed to overcome the § 314(d) bar that has proved insurmountable for prior petitioners. Whether these distinctions carry legal weight remains to be seen, but the filings reflect a coordinated effort to keep pressure on the Federal Circuit as Director John Squires continues to deny IPR institution at a 0% rate.
Since assuming personal control of all IPR institution decisions in October 2025, Director Squires has denied every petition reaching his desk, now totaling 91 consecutive denials. These summary notices contain no reasoning or analysis, listing only IPR numbers alongside the statement institution “is denied.” The practice stands in stark contrast to the PTAB’s historic institution rate of approximately 67%. Meanwhile, the USPTO’s proposed rulemaking (comments due December 2, 2025) would codify categorical bars to IPR institution without addressing the “settled expectations” doctrine or the practice of no-explanation denials. (Note that these new petitions are all based upon actions by Acting Dir. Stewart, the Squires-prompted petitioners are coming next month).
Background: The November 6 CAFC Decisions The Federal Circuit's Motorola decision rejected challenges to the rescission of former Director Vidal's 2022 interim guidance memo that, inter alia, provided a safe-harbor associated with Sotera stipulations. The court held that: (1) petitioners have no constitutionally protected property interest in IPR institution, (2) interim guidance does not create substantive rights, and (3) arguments about arbitrary and capricious conduct are "not reviewable in light of § 314(d)" because they challenge the Director's weighing of discretionary factors. Potential exceptions remain for "colorable constitutional claims" and "certain statutory challenges," but the court found found none present in Motorola or its companion cases.
Google’s Second Try: The Celgene Argument
Google’s petition against VirtaMove patents presents what may be the most doctrinally significant challenge. Unlike the earlier Google mandamus (No. 2025-144) decided on November 6, this petition (No. 26-111) directly confronts the “settled expectations” rule by invoking the Federal Circuit’s own precedent in Celgene Corp. v. Peter, 931 F.3d 1342 (Fed. Cir. 2019). In Celgene, the court held that patentees have had the “expectation” for over forty years “that patents are open to PTO reconsideration and possible cancelation” by the USPTO. The USPTO itself successfully advocated this very position throughout the Celgene litigation, arguing that “patents have been subject to reconsideration and cancellation by the USPTO in administrative proceedings for nearly four decades.” In other words, the “settled” expectation of the patent holder is that the patent can be challenged both in court and at the USPTO.
Google argues the settled expectations rule cannot be squared with Celgene. The former Acting Director denied Google’s petitions because VirtaMove’s patent had “been in force for more than 14 years, creating strong settled expectations.” But the patents at issue in Celgene were also 14 and 15 years old when challenged in IPR. If Celgene establishes that patentees have no expectation of immunity from IPR regardless of patent age, Google contends the settled expectations doctrine directly contradicts binding precedent.
To be clear, Celgene addressed whether retroactive application of IPR to pre-AIA patents constituted an unconstitutional taking under the Fifth Amendment, not whether patent age should factor into discretionary institution decisions under § 314(a), making it an imperfect analogue to the current “settled expectations” discretionary denial doctrine. However, what Celgene does establish is that the Federal Circuit has already determined that patent holders have no reasonable expectation of immunity from IPR challenge based on patent age, which fundamentally undercuts any rational basis for the Director to now treat patent age as grounds for discretionary denial of institution.
Google’s petition also advances a structural argument that the USPTO’s bifurcated process created a new, non-merits determination that falls outside the scope of § 314(d)’s appeal bar. Under the Process Memo framework, the Director first determined whether to discretionarily deny institution before the PTAB would ever consider the petition’s merits. The USPTO’s own FAQ materials explained that “non-discretionary statutory considerations” would be evaluated in the Board’s second decision. Google argues that this first-stage discretionary determination is neither a merits-based ruling under § 314(a) nor a determination “closely tied” to such merits, and therefore falls outside the limited circumstances Cuozzo shielded from review. This argument has ongoing relevance even though the Stewart bifurcated approach has changed. Notably, the most recent spate of IPR institution denials from Dir. Squires appear to revive a bifurcated approach where he first decides discretionary denial and then later considers the merits.
Kangxi: Money as Property
Kangxi’s petition presents a different theory that aims directly at the Motorola court’s reasoning. Where Motorola rejected the argument that petitioners have a property interest in “consideration of [IPR] petitions on the merits without risking discretionary denial,” Kangxi identifies a more concrete property interest: money.
Kangxi paid $38,000 in non-refundable filing fees for IPR petitions filed on January 14, 2025. At that time, the Vidal Memo’s 2022 Binding Guidance expressly stated: “The PTAB will not discretionarily deny petitions based on applying Fintiv to parallel ITC proceedings.” A parallel ITC investigation involving the same patents already existed when Kangxi filed, but under the prevailing guidance, this was not a bar to institution. After Kangxi paid its fees, the USPTO reversed course. The ITC investigation and the application of a new six-year “settled expectations” threshold rendered the petitions dead on arrival.
Kangxi’s argument distinguishes Motorola by framing the property interest as the filing fees themselves rather than an entitlement to merits consideration. “The government pocketed Petitioner’s property interest (filing fees) with no notice, no merits consideration, after failing to do what it had promised to do. Had the government disclosed its true petition-dooming rules at the time of filing, Petitioner never would have handed over its money.” The petition is thus grounded in due process and anti-retroactivity principles. Kangxi also attacks the settled expectations rule as “incoherent, arbitrary, and capricious.”
Intel and Lenovo: The ex Parte Reexamination Diversion
The joint petitioner by Intel and Lenovo arise from an interesting discretionary denial. Dir. Stewart concluded it would be “most efficient” “for Petitioner to file a reexamination request.” But ex parte reexamination is always an alternative to IPR. The petitioners argue this rationale, if upheld, would give the USPTO “license to deny IPR in every case” since ex parte reexamination is always an alternative.
The § 314(d) Problem Each petition faces a major hurdle - the statutory bar that renders IPR institution decisions "final and nonappealable." The Supreme Court's Cuozzo decision still permits review for agency "shenanigans" that exceed statutory limits, and the Federal Circuit in Motorola acknowledged exceptions for "colorable constitutional claims" and "certain statutory challenges." But so far, the courts have not identified particular circumstances that qualify as reviewable.
A Fourth Challenge: Foreign Government Control and Statutory Eligibility
A newly filed response in In re Yangtze Memory Technologies (IPR2025-00098, -00099) adds yet another dimension to the Director’s discretionary denial practices. On November 10, 2025, Director Squires issued an order to show cause asking YMTC to explain “why adjudicating petitions filed by such a designated entity is an appropriate use of the Office’s limited resources.” YMTC’s November 24 response notably sidesteps whether China is a real party in interest and, if so, whether a foreign sovereign qualifies as a “person” eligible to petition for IPR under 35 U.S.C. § 311(a). Instead, the brief focuses on public interest arguments that echo Google and Kangxi’s themes:
- The public interest in weeding out invalid patents doesn’t “wane or wax based on who facilitates removal of a bad patent”
- The Entity List addresses export controls, not patent validity
- Micron is improperly “weaponizing” YMTC’s Entity List designation after federal courts (including the Supreme Court in a cert denial) repeatedly rejected similar tactics in parallel district court litigation
The brief characterizes Micron’s Entity List arguments as attempts “to distract from the merits and seek an unwarranted advantage,” noting that YMTC’s IPR petition was unanimously instituted by the PTAB panel.