Director Discretion: A Sotera Stipulation Does Not Mandate Institution

Written by:Jacob R. Rosenbaum and Sashank Krothapally

In Re MOTOROLA SOLUTIONS, INC.

Before Dyk, Linn, and Cunningham

Summary: The PTO Director has unreviewable discretion to deny institution of IPR proceedings in view of parallel proceedings, even when the petitioner executes a Sotera stipulation.

During district court litigation, Motorola requested inter partes review of patents owned by Stellar, LLC, and the PTAB instituted inter partes review. Motorola’s petitions included a Sotera stipulation. The previous PTO Director had issued a memorandum with interim guidance indicating that the Board would not discretionarily deny institution of an IPR in view of parallel district court proceedings when the petition included a Sotera stipulation. After a change in the PTO’s leadership, the new Acting Director rescinded the previous Director’s memorandum and de-instituted Motorola’s IPRs in view of the parallel district-court proceeding. Motorola petitioned for mandamus relief, arguing that the Acting Director violated the Administrative Procedure Act and the Due Process Clause.

The Federal Circuit found no due process violation because (i) Motorola did not have a property right in institution of IPR of the challenged patents, and (ii) did not have a constitutionally protected right to have the Board consider its petitions. The Federal Circuit also denied Motorola’s APA arguments as being an end run around 35 U.S.C. § 314(d)’s bar on review of institution decisions. The Federal Circuit therefore denied the petition for mandamus.

Editor: Sean Murray