Federal Circuit disposition — 26-101

NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In Re CAMBRIDGE INDUSTRIES USA INC.,
Petitioner
______________________
2026-101
______________________
On Petition for Writ of Mandamus to the United States
Patent and Trademark Office in Nos. IPR2025-00433 and
IPR2025-00435.
______________________
ON PETITION
______________________
Before PROST, CHEN, and HUGHES, Circuit Judges.
PER CURIAM.
O R D E R
Cambridge Industries USA Inc. petitioned for inter
partes review (“IPR”) of Applied Optoelectronics, Inc.’s pa-
tents. Applied Optoelectronics asked the United States Pa-
tent and Trademark Office (“PTO”) to exercise its
discretionary authority and deny institution. The PTO
agreed as to two of Cambridge’s petitions based on the “Pa-
tent Owner’s settled expectations as to the [challenged] pa-
tents” that “have been in force for nine and seven years.”
Appx3. Cambridge now petitions for a writ of mandamus
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IN RE CAMBRIDGE INDUSTRIES USA INC. 2
directing the PTO to reconsider its non-institution deci-
sions.
I.
Applied Optoelectronics owns patents concerning opto-
electronics modules, including U.S. Patent Nos. 9,523,826
(“the ’826 patent”); 10,042,116 (“the ’116 patent”);
10,379,301; 10,313,024; and 10,788,690. In February 2024,
Applied Optoelectronics sued Cambridge for infringement
of those patents. In January 2025, Cambridge filed five
petitions seeking IPR, including the two petitions at issue
here challenging claims of the ’826 and ’116 patents.
At the time Cambridge filed its petitions, the Director
had in place interim guidance directing the PTO not to “dis-
cretionarily deny institution in view of parallel district
court litigation where a petitioner presents a stipulation
not to pursue in a parallel proceeding the same grounds or
any grounds that could have reasonably been raised before
the” agency. Appx24. Cambridge so stipulated. However,
on February 28, 2025, that guidance was rescinded.
Appx61. And on March 26, 2025, additional processes were
implemented by the Acting Director; among them, permit-
ting parties to address all relevant considerations, includ-
ing “[s]ettled expectations of the parties, such as the length
of time the claims have been in force.” Appx67.
Applied Optoelectronics then sought discretionary de-
nial of institution. On June 27, 2025, the PTO agreed-in-
part. It cited the pending district court litigation between
the parties but noted “[t]here is no currently scheduled
trial date.” Appx2. As to the ’826 and ’116 patents, the
PTO determined Applied Optoelectronics had “settled ex-
pectations” because those patents “have been in force for
nine and seven years, respectively,” and concluded “discre-
tionary denial is appropriate as to” those proceedings.
Appx3. By contrast, it found the patents in the other three
IPRs “have not been in force for a significant period of time
(issued in 2020, 2019, and 2019)” and thus “Patent Owner
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IN RE CAMBRIDGE INDUSTRIES USA INC. 3
has not developed strong settled expectations that favor
discretionary denial.” Appx2. After Director review was
denied in October 2025, Cambridge filed these petitions.
II.
“The remedy of mandamus is a drastic one, to be in-
voked only in extraordinary situations.” Kerr v. U.S. Dist.
Ct. for N. Dist. of Cal., 426 U.S. 394, 402 (1976). Accord-
ingly, “three conditions must be satisfied before it may is-
sue.” Cheney v. U.S. Dist. Ct. for D.C., 542 U.S. 367, 380
(2004). The petitioner must show a “clear and indisputa-
ble” right to relief. Id. at 381 (quoting Kerr, 426 U.S. at
403). The petitioner must “lack adequate alternative
means to obtain the relief” it seeks. Mallard v. U.S. Dist.
Ct. for S. Dist. of Iowa, 490 U.S. 296, 309 (1989); Cheney,
542 U.S. at 380. And “even if the first two prerequisites
have been met, the issuing court, in the exercise of its dis-
cretion, must be satisfied that the writ is appropriate un-
der the circumstances.” Cheney, 542 U.S. at 381.
Given Congress committed institution decisions to the
Director’s discretion, SAS Inst., Inc. v. Iancu, 584 U.S. 357,
366 (2018), and protected exercise of that discretion from
judicial review by making such determinations “final and
nonappealable,” 35 U.S.C. § 314(d), mandamus is ordinar-
ily unavailable for review of institution decisions. Mylan
Lab’ys Ltd. v. Janssen Pharmaceutica, N.V., 989 F.3d 1375,
1382 (Fed. Cir. 2021). That general prohibition bars review
of decisions denying institution of IPR proceedings for effi-
ciency reasons based on parallel district court litigation in-
volving the same patents, id. at 1378–79, 1381. We have
noted possible exceptions for “colorable constitutional
claims,” id. at 1382, and certain statutory challenges, see
Apple Inc. v. Vidal, 63 F. 4th 1, 12 n.5 (Fed. Cir. 2023). But
no such claims have been presented here.
Cambridge’s constitutional challenges, like those
raised in In re Motorola Solutions, Inc., No. 2025-134, 2025
WL 3096514 (Fed. Cir. Nov. 6, 2025), fail to identify the
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IN RE CAMBRIDGE INDUSTRIES USA INC. 4
kind of property rights or retroactivity concerns that might
give rise to a colorable Due Process Clause claim. See
Mylan, 989 F.3d at 1383. Like Motorola, Cambridge iden-
tifies no “constitutionally protected right for its petition to
be considered” based on certain criteria and certainly “no
[constitutional] right to an IPR.” Motorola, 2025 WL
3096514, at *4 (quoting Mylan, 989 F.3d at 1383). Cam-
bridge’s expectation that the PTO would evaluate its peti-
tion based on only certain criteria, moreover, is insufficient
to establish a constitutional due process violation. Id. (cit-
ing United States v. Carlton, 512 U.S. 26, 33 (1994)).
Cambridge’s remaining arguments raising statutory
and APA-based challenges also do not demonstrate entitle-
ment to mandamus relief.1 Cambridge’s contention that
the PTO was required to promulgate relevant considera-
tions for institution through notice-and-comment rulemak-
ing procedures can be raised in an APA action in federal
district court; thus, it has failed to demonstrate lack of
available alternatives for relief. 2025 WL 3096514, at *5
(“[O]n that issue, there appears to be no dispute that an
APA action in federal district court affords Motorola an
available avenue to raise this same challenge.”); see also
Apple, 63 F.4th at 14. As to Cambridge’s contention that
the settled expectations factor exceeds the PTO’s authority
and is unreasonable, Cambridge has not adequately
demonstrated—for purposes of meeting the “especially
1 Cambridge casts its ultra vires arguments regard-
ing the PTO’s use of settled expectations as a factor in
denying IPR also as a constitutional separation of powers
challenge. But the Supreme Court has noted that “claims
simply alleging that the President has exceeded his statu-
tory authority are not ‘constitutional’ claims,” Dalton v.
Specter, 511 U.S. 462, 473–74 (1994), and we agree with
the PTO that this challenge presents no colorable constitu-
tional claim.
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IN RE CAMBRIDGE INDUSTRIES USA INC. 5
difficult” mandamus standard, Mylan, 989 F.3d at 1382—
how these challenges are reviewable.
Cambridge argues the PTO created what amounts to a
“maximum-patent-age cap on IPR,” Pet. at 26, pointing to
what it calls “statutory markers” for institution decisions—
35 U.S.C. §§ 314(a); 315(b); 315(d); 315(e); and 325(d)—
none of which, it notes, deal with how long the patent has
been in force, id. at 27. Cambridge further cites other past
and present post-grant review schemes that contain pa-
tent-age cutoffs as evidence Congress intended to prohibit
consideration of the age of a patent for purposes of institut-
ing IPR. Cambridge separately contends promulgation of
the factor was arbitrary and capricious and not reasonably
explained. Based on those challenges, Cambridge seeks to
“vacate the two non-institution decisions” and “direct the
[]PTO to reconsider institution” without considering the
settled expectations factor. Pet. at 36.
At bottom, Cambridge’s arguments are about what fac-
tors the Director may consider when deciding whether to
institute IPR. Unlike Cambridge’s assertions regarding
the failure to employ notice and comment rulemaking,
these contentions appear to “focus directly and expressly
on institution standards,” Apple, 63 F.4th at 12, and turn
on “the application and interpretation of statutes related to
the Patent Office’s decision to initiate inter partes review,”
which are not generally reviewable. Cuozzo Speed Techs.
v. Lee, 579 U.S. 261, 274–75 (2016); see Thryv, Inc. v. Click-
To-Call Techs., LP, 590 U.S. 45, 58–59 (2020); Apple, 63
F.4th at 13 (holding § 314(d) encompasses not only peti-
tion-specific challenges but also the substantive instruc-
tions and guidance from the Director about how to make
the institution decisions on the Director’s behalf).
We reiterate that we do not decide whether the PTO’s
actions are correct or whether the use of this factor is per-
mitted under the statutes. Nor do we address the availa-
bility of mandamus relief for other challenges to institution
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IN RE CAMBRIDGE INDUSTRIES USA INC. 6
decisions based on non-constitutional grounds. We decide
only that Cambridge has failed to show a clear and indis-
putable right to the relief requested given the limits on our
review of the PTO’s decision to deny institution.
Accordingly,
IT IS ORDERED THAT:
(1) The petition is denied.
(2) All motions for leave to file briefs amici curiae are
granted and the corresponding briefs are accepted for fil-
ing.
December 9, 2025
Date
FOR THE COURT
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