The Federal Circuit recently denied a petition for a writ of mandamus that challenged the PTO Director’s reliance on “settled expectations” to discretionarily deny two inter partes review (IPR) petitions. In so doing, the court explained that, while it was not deciding whether the Director’s use of “settled expectations” was correct, the petitioner’s arguments about what factors the Director may consider when deciding whether to institute an IPR or post-grant review (PGR) are not generally reviewable and did not provide sufficient basis for mandamus review here.
The key issue before the court was whether the Director acted within its authority when it denied institution of two IPR petitions based on “settled expectations” tied to the age of the challenged patents. The petitioner argued that the Director exceeded its statutory authority and violated procedural requirements by considering how long the patents had been in force. The petitioner also asserted that the PTO failed to promulgate the institution considerations through notice-and-comment rulemaking and that inclusion of “settled expectations” as a factor in the Director’s institution determination was arbitrary and capricious.
The court began its analysis by reiterating the stringent standard for mandamus relief, which requires a petitioner to demonstrate a clear and indisputable right to relief, lack of adequate alternative remedies, and that issuance of the writ is appropriate under the circumstances. The court emphasized that Congress committed institution decisions to the Director’s discretion and made such determinations “final and nonappealable” under 35 U.S.C. § 314(d). Citing precedent, the court noted that this bar on judicial review extends to decisions denying institution for efficiency reasons and generally encompasses challenges to the factors considered in making institution decisions.
The court then held the petitioner’s arguments insufficient to meet the demanding mandamus standards. It reasoned that challenges to rulemaking procedures could be pursued through an APA action in federal district court, meaning the petitioner had an adequate alternative remedy. The court rejected the petitioner’s arguments that the Director exceeded its authority by implementing the “settled expectations” factor, holding those arguments focus squarely on institution standards—standards that are generally not reviewable. The court also rejected petitioner’s constitutional claims, finding no colorable due process or separation-of-powers violation because there is no constitutional right to an IPR or to have a petition considered under specific criteria.
Practice Tip: The Federal Circuit’s decision highlights the difficulty in seeking mandamus relief based on the Director’s institution decision. This may represent an opportunity for patentees who face IPR or PGR challenges in front of the PTO to raise new arguments that justify denying institution. Patent challengers similarly should, in addition to raising strong substantive challenges, provide counterarguments for why settled expectations should not dictate denial of institution and may consider an APA suit in district court if their particular case warrants such a suit.
In re Cambridge Industries USA Inc., Case No. 2026-101 (Fed. Cir. Dec. 9, 2025).