Federal Circuit Upholds Director Deinstitution Despite Sotera Stipulation

In In re Motorola Solutions, Inc., No. 2025-134 (Fed. Cir. Nov. 6, 2025), the Federal Circuit rejected Motorola's request for mandamus relief after the USPTO rescinded prior guidance on discretionary denials of inter partes review (IPR) and deinstitituted two Motorola IPRs.

Since 2020, when deciding whether to exercise discretion to institute IPRs when there are parallel proceedings in another court, the USPTO has considered factors set forth in its precedential decision Apple Inc. v. Fintiv, Inc., No. IPR2020-00019, 2020 WL 2126495 (PTAB Mar. 20, 2020). On June 21, 2022, the UPSTO Director issued interim guidance, specifying that an IPR would not be discretionarily denied based on parallel litigation if the Petition offered a so-called Sotera stipulation. Such a stipulation gives up all invalidity arguments in district court that could have been raised in the IPR. But in early 2025, the new Acting Director rescinded the interim guidance, and issued new guidance,