In Re TESSELL, INC v. Tessell, Inc., No. 3:24-cv-01729 N.D. Cal. Mar. 12, 2025 , Dkt. No. 63. 2 John A.…

NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In Re TESSELL, INC.,
Petitioner
______________________
2026-117
______________________
On Petition for Writ of Mandamus to the United States
Patent and Trademark Office in Nos. IPR2025-00298,
IPR2025-00322, IPR2025-00732, and IPR2025-00733.
______________________
ON PETITION AND MOTION
______________________
Before TARANTO, MAYER, and STARK, Circuit Judges.
PER CURIAM.
O R D E R
Tessell, Inc. sought inter partes review (“IPR”) of pa-
tents owned by Nutanix, Inc. that name Tessell’s founders
and employees as inventors. The Acting Director of the
United States Patent and Trademark Office (“PTO”) denied
institution, determining review would not be an appropri-
ate use of agency resources. Tessell now seeks a writ of
mandamus to compel the Director to vacate those decisions
and order further proceedings. The Director and Nutanix
oppose. We deny Tessell’s petition.
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IN RE TESSELL, INC. 2
I.
The four patents at issue in this case name Bal-
asubrahmanyam Kuchibhotla, Kamaldeep Khanuja, Bakul
Banthia, Sujit Menon, Maneesh Rawat, and Sagar Son-
takke as inventors. The applications that would eventually
be issued as the challenged patents here were assigned to
Nutanix—the company Messrs. Kuchibhotla, Khanuja,
Banthia, Menon, Rawat, and Sontakke worked for at the
time of the inventions. In 2021, Messrs. Kuchibhotla, Kha-
nuja, and Banthia left Nutanix and founded Tessell.
Messrs. Menon, Rawat, and Sontakke would later leave
Nutanix to join them as Tessell employees.
Between December 2024 and March 2025, Tessell filed
four petitions seeking IPR of the patents.1 In June 2025,
the Patent Trial and Appeal Board instituted IPR proceed-
ings on one of the patents (U.S. Patent No. 11,860,818). In
August 2025, however, the Acting Director2 vacated that
decision and denied Tessell’s petition. She recognized that
“[a]ssignor estoppel does not apply in inter partes reviews,”
ECF No. 2 at 44, but, in exercising her discretionary au-
thority over whether to institute proceedings, concluded
that it would not be “an efficient use of Office resources to
institute an IPR on a patent where the inventors of that
patent now advocate for its unpatentability,” id. at 45.
The Acting Director subsequently granted Nutanix’s
requests to discretionarily deny Tessell’s petitions
1 Nutanix filed a lawsuit in the United States Dis-
trict Court for the Northern District of California against
Tessell alleging infringement of the patents. Those pro-
ceedings have been stayed since March 2025 pending arbi-
tration. Nutanix, Inc. v. Tessell, Inc., No. 3:24-cv-01729
(N.D. Cal. Mar. 12, 2025), Dkt. No. 63.
2 John A. Squires was subsequently confirmed as
PTO Director.
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IN RE TESSELL, INC. 3
challenging the remaining patents for the same reasons.
Tessell then filed this petition seeking a writ to compel the
PTO to vacate those decisions, to order the Director to re-
instate the decision to institute IPR on the ’818 patent, and
to direct the PTO to consider its petitions on the other pa-
tents on “the merits.” Id. at 36–37.
II.
The standard for mandamus relief is demanding. Tes-
sell must show, among other things, that it has a clear and
indisputable right to the relief it seeks. Cheney v. U.S.
Dist. Ct. for D.C., 542 U.S. 367, 380–81 (2004). Given Con-
gress committed institution decisions to the Director’s dis-
cretion, even when the statutory pre-conditions are
present, SAS Inst., Inc. v. Iancu, 584 U.S. 357, 366 (2018);
Apple Inc. v. Squires, ___ F.4th ___, 2026 WL 406495, at *1
(Fed. Cir. Feb. 13, 2026), and protected the exercise of that
discretion from review by making such determinations “fi-
nal and nonappealable,” 35 U.S.C. § 314(d), we have recog-
nized that mandamus is ordinarily unavailable for review
of institution decisions. Mylan Lab’ys Ltd. v. Janssen
Pharmaceutica, N.V., 989 F.3d 1375, 1382 (Fed. Cir. 2021).
We noted an exception for “colorable constitutional claims,”
id. at 1382, but cannot say that Tessell has presented such
a claim here.
Tessell primarily argues that the PTO exceeded its au-
thority under 35 U.S.C. § 311(a), which provides, in rele-
vant part, that “a person who is not the owner of a patent
may file with the Office a petition to institute an inter
partes review of the patent.” Tessell relies on Arista Net-
works, Inc. v. Cisco Systems, Inc., 908 F.3d 792, 804 (Fed.
Cir. 2018), a case in which this court rejected an interpre-
tation of § 311(a) that would bar an assignor from filing a
petition for IPR. But Arista is materially distinguishable
from the circumstances here, because Arista involved the
review of a final written decision and not a discretionary
denial of institution. Moreover, at bottom, Tessell is
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IN RE TESSELL, INC. 4
challenging whether the PTO erred in applying a statute
related to decisions on institution. Given the general bar
on review of such challenges, see Thryv, Inc. v. Click-to-Call
Techs., LP, 590 U.S. 45, 58–59 (2020), we cannot say Tes-
sell has shown a clear right to relief.
Tessell also argues that the PTO violated the Due Pro-
cess Clause because the Director’s prior designation of the
Patent Trial and Appeal Board’s decision in Athena Auto-
mation Ltd. v. Husky Injection Molding Systems Ltd., No.
IPR2013-00290 (P.T.A.B. Oct. 25, 2013), as precedential
placed a substantive limitation on the Acting Director’s dis-
cretion. But we rejected an analogous argument in In re
Motorola Solutions, Inc., 159 F.4th 30 (Fed. Cir. 2025)—
where the petitioner was similarly claiming a property in-
terest in rescinded Director guidance binding on only the
Board for its exercise of delegated non-institution author-
ity. Like the Director’s prior interim guidance in Motorola,
here the Director’s direction to the Board in the form of a
precedential Board decision to govern later Board decisions
does not require the PTO to reach any particular outcome
on a petition or otherwise create a cognizable property in-
terest in IPR review that might conceivably give rise to a
colorable due process claim. See Apple, ___ F.4th ___, 2026
WL 406495, at *8 (noting that such guidance “leaves a pa-
tent challenger’s actual legal rights and obligations un-
changed” and “what they would be if Congress had not
enacted the IPR regime (which it enacted only with pro-
tected Director discretion about institution)”).
Accordingly,
IT IS ORDERED THAT:
(1) All motions for leave to file briefs amici curiae are
granted and the corresponding briefs are accepted for fil-
ing.
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IN RE TESSELL, INC. 5
(2) The petition is denied.
February 24, 2026
Date
FOR THE COURT
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