Federal Circuit Axes More Challenges to Patent Board Changes (2)

The Federal Circuit denied two petitions challenging procedural changes at the US Patent and Trademark Office that made it more difficult to seek validity reviews of patents more than six years after they’ve been issued.

A panel of judges emphasized in a pair of Tuesday orders both the court’s limited ability to review institution decisions at the Patent Trial and Appeal Board and the high bar for parties asking the court to issue writs of mandamus directing a judge or tribunal to take a certain action.

Those petitions from Cambridge Industries USA Inc. and Sandisk Technologies Inc., as well as another rejected petition filed by HighLevel Inc., make it six appellate attacks on PTO procedural changes that’ve been denied by the patent-centric appeals court in the last two months.

Since its creation by Congress in 2011, the board has functioned as an alternate forum from district courts to contest the validity of patents, but critics in the patent owner community have derisively called it a “death squad” for its willingness to ax patents juries and judges might’ve otherwise upheld. Tech companies, which are among the most frequent targets of patent litigation, have defended both the right of access to the PTAB and the board as an institution.

Cambridge’s mandamus petition asked the US Court of Appeals for the Federal Circuit to direct the agency to reconsider decisions dismissing its challenges to two Applied Optoelectronics Inc. patents. The company specifically objected to the agency’s then-acting director applying a new factor for pre-screening inter partes review challenges that shields from review patents that have been in force for more than six years based on a patent owner’s “settled expectations.”

The court, in an unsigned order, dismissed Cambridge’s constitutional arguments aimed at the PTO’s new processes for screening validity challenges. The order states Cambridge’s separate argument that the agency changes could only be put in place after a formal rulemaking process could be raised as part of an Administrative Procedures Act lawsuit rather than a mandamus petition.

“We reiterate that we do not decide whether the PTO’s actions are correct or whether the use of this factor is permitted under the statutes,” the court said. “We decide only that Cambridge has failed to show a clear and indisputable right to the relief requested given the limits on our review of the PTO’s decision to deny institution.”.

The panelists—Judges Sharon Prost, Raymond T. Chen, and Todd M. Hughes—also denied Sandisk’s petition that similarly contested a PTO ruling turning away its challenges to three flash-memory patents that had been active for between nine and 12 years due to patent owner Polaris Power LED Technologies LLC’s “settled expectations.”

“As with the petitioner in Cambridge, Petitioners here have failed to identify the kind of property rights or retroactivity concerns that might give rise to a colorable constitutional claim,” the order said.

In the HighLevel case, the PTO rejected challenges to two patents based on efficiency arguments since those patents were deemed abstract in district court.

That district court ruling is being appealed by patent owner Etison LLC, which does business as ClickFunnels. HighLevel says if it’s reversed, that will leave the company “statutorily time-barred from filing further IPR petitions on these patents.”

The same panel ruled that company’s constitutional arguments were lacking, and it could challenge the PTO’s new criteria through an APA lawsuit.

Previous panels have denied mandamus petitions filed by SAP America Inc., Motorola Solutions Inc., and a joint petition from Google LLC and Samsung Electronics Co.

Applied Optoelectronics is represented by Weintraub Tobin. Cozen O’Connor represents Cambridge.

Haynes and Boone represents Sandisk, while Kramer Alberti Lim & Tonkovich LLP represent Polaris.

O’Melveny & Myers represents HighLevel. ClickFunnels is represented by Venable.

The PTO Solicitor’s Office and lawyers at the US Department of Justice defended the agency’s positions in both cases.

The cases are:

• In Re: Cambridge Indus. USA Inc., Fed. Cir., 26-101, mandamus pet. denied 12/9/25;
• In Re: Sandisk Techs. Inc., Fed. Cir., 25-152, mandamus pet. denied 12/9/25;
• In Re: HighLevel Inc., Fed. Cir., 25-148, mandamus pet. denied 12/9/25.