Introduction
The Patent Trial and Appeal Board (PTAB) may no longer be accepting inter partes review (IPR) petitions for patents that have been in force for more than six years, and there may be nothing you can do about it.
In In re Cambridge Industries USA Inc., the U.S. Court of Appeals for the Federal Circuit denied a petition for a writ of mandamus seeking to compel the U.S. Patent and Trademark Office (USPTO) to reconsider its discretionary denial of IPRs. The court emphasized, once again, that institution decisions, particularly those grounded in discretionary considerations, are largely insulated from judicial review under 35 U.S.C. § 314(d). However, aside from once again not allowing appeal of the USPTO Director’s discretionary denial, there is another takeaway from this case. The Director seems to have indicated that if you do not petition for invalidity of a patent before a certain time after issuance, you might be out of luck. The Director denied institution of two patents because of “settled expectations” because those patents had been in force for seven and nine years respectively.
Background
Applied Optoelectronics, Inc. owns several patents directed to optoelectronics modules, including U.S. Patent Nos. 9,523,826 and 10,042,116. After Applied Optoelectronics sued Cambridge Industries for patent infringement in district court, Cambridge responded by filing five IPR petitions in January 2025, two of which challenged claims of the ’826 and ’116 patents.
At the time Cambridge filed its petitions, interim USPTO guidance suggested that discretionary denial would generally not be appropriate where a petitioner stipulated not to pursue in district court the same grounds raised (or that could have been raised) in IPR. Cambridge provided such a stipulation. However, that guidance was rescinded in February 2025. Shortly thereafter, the Acting Director implemented additional procedures expressly allowing consideration of factors such as the patent owner’s “settled expectations,” including how long the challenged claims had been in force.
Relying on this updated framework, Applied Optoelectronics requested discretionary denial of institution. The PTAB, acting on behalf of the Director, partially agreed. It denied institution for the ’826 and ’116 patents, citing the patent owner’s settled expectations because those patents had been in force for nine and seven years, respectively. In contrast, the PTAB instituted IPRs on three newer patents, concluding that they had not been in force long enough to give rise to strong settled expectations favoring denial. The three patents that were instituted had been in force for between five and six years. It is possible the Director has created a new rule that patents in force more than six years are not available for IPR based on “settled expectations.”
Cambridge sought Director review, which was denied, and then petitioned the Federal Circuit for a writ of mandamus directing the USPTO to reconsider its non-institution decisions without relying on the settled expectations factor.
The Federal Circuit’s Decision
The Federal Circuit denied the mandamus petition. Applying the Supreme Court’s stringent mandamus standard, the court concluded that Cambridge failed to establish a clear and indisputable right to relief, lacked no adequate alternative remedy, and did not show that issuance of the writ would be appropriate under the circumstances.
The court emphasized that Congress committed IPR institution decisions to the Director’s discretion and expressly made those determinations “final and nonappealable” under § 314(d). Consistent with prior precedent, the Federal Circuit reiterated that mandamus is ordinarily unavailable to review institution decisions, including discretionary denials based on efficiency or policy considerations.
Cambridge advanced several arguments to avoid this jurisdictional bar. It contended that reliance on “settled expectations” was ultra vires, arbitrary and capricious, and effectively imposed an impermissible patent-age cutoff not found in the IPR statutes. It also raised constitutional and Administrative Procedure Act (APA) challenges, including an argument that the USPTO was required to adopt such factors through notice-and-comment rulemaking.
The court rejected these arguments as a basis for mandamus. It held that Cambridge’s constitutional theories did not rise to the level of colorable due process or separation-of-powers claims. As for the APA-based challenges, the court explained that such arguments could be raised in a separate district court action, meaning Cambridge had not shown the absence of alternative avenues for relief. Most critically, the court concluded that Cambridge’s core objections went directly to the standards governing institution decisions, which are precisely the type of issues Congress shielded from appellate review.
Importantly, the Federal Circuit was careful to note what it did not decide: it expressed no view on whether the USPTO’s reliance on settled expectations was correct or permissible under the statute. The denial rested solely on the limits of judicial review and the demanding nature of mandamus relief.
Conclusion
In re Cambridge Industries reinforces several key takeaways for patent litigants and in-house legal teams. First, discretionary denials of IPR, particularly those grounded in evolving USPTO policy considerations, remain exceedingly difficult to challenge on appeal. Section 314(d) continues to serve as a formidable jurisdictional barrier, particularly where petitioners raise statutory or policy-based objections to the factors the PTAB considers.
Second, the decision highlights the growing practical importance of “settled expectations” and patent age as considerations in discretionary denial analyses. While the Federal Circuit did not endorse or reject this factor on the merits, the PTAB’s willingness to rely on it underscores the need for petitioners to account for patent vintage when developing post-grant strategies.
Finally, for companies facing parallel litigation and IPR proceedings, the case is a reminder that USPTO guidance can change quickly—and reliance on interim policies may not insulate petitions from discretionary denial. Strategic planning should therefore assume a degree of uncertainty in institution decisions and consider alternative paths, including district court defenses and potential APA challenges, where appropriate.