Motorola Ruling Favoring US Director Is a Win for Patent Owners

The Nov. 6 ruling in In re Motorola Solutions underscores the US Patent and Trademark Office director’s sweeping authority to deny inter partes review petitions, even after the Patent Trial and Appeal Board has instituted such a review of a patent claim.

This decision by the US Court of Appeals for the Federal Circuit signals a continued trend toward greater use of discretionary denials, which reduces the predictability and strategic value of inter partes reviews for those accused of patent infringement.

Companies should anticipate higher uncertainty, fewer litigation stays, and increased pressure to reassess the cost-benefit calculus of filing such reviews, known as IPRs.

Case Background

Stellar LLC sued Motorola Solutions in 2023 for infringing eight patents covering technologies for continuous loop recording, event-triggered protection, and wireless offloading, features commonly used in wearable and mobile surveillance systems.

Motorola responded with eight IPR petitions challenging the validity of those patents and filed a Sotera stipulation, agreeing not to pursue the same or reasonably related invalidity grounds in district court.

This approach aligned with the PTO’s 2022 memorandum issued by then-Director Kathy Vidal, which provided guidance on discretionary denials under factors established under Apple v. Fintiv two years prior. The memo discouraged discretionary denials when petitioners offered Sotera stipulations, presented compelling unpatentability evidence, or faced parallel International Trade Commission proceedings.

Initially, the PTAB instituted all eight IPRs. But in early 2025, Acting PTO Director Coke Morgan Stewart rescinded the Vidal memo and introduced a new process memorandum that split institution decisions into discretionary and merits-based considerations.

Under this revised framework, Stewart personally reviewed Motorola’s petitions and rejected all of them, citing efficiency concerns tied to parallel litigation.

Federal Circuit Deferral

Motorola in its court filing argued that the PTO’s policy shift underlying Stewart’s memorandum violated Motorola’s constitutional and statutory rights.

It claimed that rescinding the earlier guidance deprived it of due process under the Fifth Amendment, and that the change violated the Administrative Procedure Act by rescinding guidance retroactively without proper rulemaking.

The US Court of Appeals for the Federal Circuit unanimously rejected both arguments. On the constitutional claim, the court held that IPR institution is inherently discretionary under 35 U.S.C. §314(a), so the Vidal memo didn’t create enforceable rights or a property interest. On the APA claim, the court concluded that Motorola’s challenge was an impermissible “end run” around §314(d), which bars appellate review of institution decisions.

The court left open the possibility of a separate administrative challenge. The three-judge panel highlighted that §314(d) does “not preclude a challenge to whether the PTO has complied with APA’s notice-and-comment rulemaking requirements ‘apart from the reviewability of’ a specific institution decision.” Nevertheless, the court made clear that the PTO retains broad, largely unreviewable discretion to deny specific IPR petitions, even after institution.

Pendulum Swing

This decision reinforces a policy shift that may favor patent owners and reshape litigation strategy. With more discretionary denials and less certainty about when the PTO will deny institution, companies facing infringement allegations may face higher risk and lower predictability when pursuing IPRs.

The significant upfront cost of preparing and filing IPR petitions (often exceeding six figures) could become harder to justify when the likelihood of institution is increasingly uncertain.

The ruling also may affect litigation stays. If discretionary denials become more common, judges may view stays as premature. If courts that previously entertained pre-institution stays are now less inclined to grant them, the value of IPR filings will be reduced as a defensive tactic, particularly in slower-moving jurisdictions where IPRs historically offered the greatest strategic leverage and stays were more common.

For companies facing infringement allegations, less predictability in IPR institutions is likely to require some strategic reassessment. Petitioners will need to evaluate whether compelling prior art exists before investing in an IPR petition and consider how parallel litigation timelines and venue-specific stay practices affect the overall value of an IPR.

Alternative strategies, such as early settlement, licensing, early litigation motions, or design-arounds, may gain traction as the cost-benefit equation shifts.

Patent owners, on the other hand, stand to benefit to some extent from this pendulum swing. Greater uncertainty around IPR institutions likely strengthens their position in settlement negotiations and on balance may accelerate district court proceedings, increasing pressure on those accused of infringement.

This trend also may influence forum selection, as parties weigh jurisdictions’ attitudes toward stays and case management in view of the evolving PTO practices.

While this trend may appear to favor patent owners, companies that frequently challenge patents may be able to rely on alternative strategies to maintain leverage.

In re Motorola Solutions underscores that IPR institution is a discretionary tool, not a guaranteed right. If the PTO continues to broaden its use of discretionary denials, both petitioners and patent owners should consider adapting their strategies to a landscape with increasing unpredictability.

The case is In Re Motorola Sols. Inc., Fed. Cir., 25-134, mand. denial 11/6/25.

This article does not necessarily reflect the opinion of Bloomberg Industry Group, Inc., the publisher of Bloomberg Law, Bloomberg Tax, and Bloomberg Government, or its owners.

Author Information

Nathan C. Brunette is a partner at Stoel Rives in Portland, Ore., representing technology and consumer products companies in patent and IP litigation.

Jonathan S. Barnard, a registered patent attorney, is an associate at Stoel Rives in Seattle.

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