In Re GOOGLE LLC, SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC v. U.S. Dist. Ct. for N. Dist. of Cal., 426 U.S. 394, 402 1976 . Accord- ingly, “three…

N OTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In Re GOOGLE LLC, SAMSUNG ELECTRONICS
CO., LTD., SAMSUNG ELECTRONICS AMERICA,
INC.,
Petitioners
______________________
2025-144
______________________
On Petition for Writ of Mandamus to the United States
Patent and Trademark Office in Nos. IPR2024-01464 and
IPR2024-01465.
______________________
ON PETITION
______________________
Before D YK, L INN, and STOLL , Circuit Judges.
L INN, Circuit Judge.
O R D E R
Samsung Electronics Co., Ltd. and Samsung Electron-
ics America, Inc. (collectively, “Samsung”) and Google LLC
jointly petitioned for inter partes review (IPR) of patents
owned by Cerence Operating Company. The then-Acting
Director of the United States Patent and Trademark Of-
fice, through her delegee, the Patent Trial and Appeal
Board, denied the petitions, concluding such review would
be an inefficient use of resources given the progress of
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IN RE GOOGLE LLC 2
parallel district court proceedings involving Cerence’s as-
sertion of the same patents. Google and Samsung now pe-
tition for a writ of mandamus. We deny the petition.
I.
In October 2023, Cerence sued Samsung alleging in-
fringement of five patents. Samsung responded by assert-
ing affirmative defenses of invalidity based in part on
Apple Inc.’s Siri and Samsung’s S Voice systems in combi-
nation with prior art patents and applications. Samsung
and Google also jointly petitioned for IPR. Samsung stipu-
lated that if the IPRs were instituted, it would not pursue,
in the parallel civil litigation, any ground for unpatentabil-
ity that it raised or reasonably could have raised in the IPR
proceedings. Appx14, Appx31.
On April 23, 2025, the Board denied the petitions, re-
lying on Board precedent that set forth a discretionary
standard for denying IPR in situations of parallel civil pro-
ceedings. The Board noted, among other things, that the
trial date in the civil litigation “is almost seven months be-
fore the final written decision in this proceeding would be
due,” Appx11, Appx28, and that “concerns of inefficiency
and the possibility of conflicting decisions” weighed against
institution because Samsung’s district court invalidity con-
tentions contemplate combining the Siri and S Voice sys-
tems with the prior art cited in the petitions, Appx14–15,
Appx30–32. The then-Acting Director denied review of
those decisions, and this petition followed.
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
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IN RE GOOGLE LLC 3
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 that exercise of 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—includ-
ing decisions denying institution based on the progress of
parallel district court proceedings involving the same pa-
tents. See Mylan Lab’ys Ltd. v. Janssen Pharmaceutica,
N.V., 989 F.3d 1375, 1378–79 (Fed. Cir. 2021). 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.
Petitioners assert that the PTO violated the Due Pro-
cess Clause and the Administrative Procedure Act by deny-
ing IPR based on the parallel district court proceedings
despite Samsung’s stipulations. They focus on interim
guidance from the Director in place at the time they filed
their petitions instructing the Board until further notice
not to “deny institution in view of parallel district court lit-
igation where a petitioner presents a stipulation not to pur-
sue in a parallel proceeding the same grounds or any
grounds that could have reasonably been raised before the
PTAB,” Appx39—guidance the Acting Director rescinded
just before denying their IPR petitions here.
In a separate order issued today, we denied a petition
raising materially similar challenges to the recission of the
Director’s interim guidance, In re Motorola Sols., Inc., No.
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IN RE GOOGLE LLC 4
2025-134 (Fed. Cir. Nov. 6, 2025), ECF No. 44. We ex-
plained that the interim guidance did not create a consti-
tutionally-protected property interest and that reliance on
that guidance when undertaking the expense of filing peti-
tions was insufficient to establish a constitutional viola-
tion. We further found that APA-based arguments that the
recission required notice and comment rulemaking and
that the PTO acted arbitrarily and capriciously in applying
the recission retroactively were not cognizable statutory
challenges that entitled petitioner to mandamus relief.
Those conclusions likewise support denial of Petitioners’
similar due process and APA challenges here.1
Petitioners also argue the Board violated separation of
powers principles by demanding they forgo invalidity
grounds that would not otherwise be required by 35 U.S.C.
§ 315(e). That argument, however, misconstrues the
Board’s decisions here. The Board simply evaluated the
factors in light of the art presented both in the district court
and the IPR petitions and determined that institution
would be inefficient, even in light of the stipulation, be-
cause it still “would be considering the same claims . . .
whose validity would have been previously tried before the
district court” “almost seven months before the final writ-
ten decision in th[ese] proceeding[s].” Appx11, Appx16,
Appx28, Appx33. That conclusion—as to the weight of the
various factors under the Director’s discretion—does not
1 Google argues that it would have petitioned sepa-
rate of Samsung had it known the interim guidance would
be rescinded, but Google likewise was aware that the in-
terim guidance could be rescinded at any time, and in any
event Google did not request the Board to sever its requests
from Samsung’s. Cf. In re DBC, 545 F.3d 1373, 1378 (Fed.
Cir. 2008) (“It is well-established that a party generally
may not challenge an agency decision on a basis that was
not presented to the agency.”).
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IN RE GOOGLE LLC 5
raise any colorable constitutional challenge and is other-
wise unreviewable.
Accordingly,
I T I S O RDERED T HAT :
The petition is denied.
November 6, 2025
Date
F OR THE COURT
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