Federal Circuit disposition — 25-132

N OTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In Re SAP AMERICA, INC.,
Petitioner
______________________
2025-132, 2025-133
______________________
On Petitions for Writ of Mandamus to the United
States Patent and Trademark Office in Nos. IPR2024-
01495 and IPR2024-01496.
______________________
ON PETITION
______________________
Before D YK, L INN, and CUNNINGHAM , Circuit Judges.
L INN, Circuit Judge.
O R D E R
SAP America, Inc. petitioned for inter partes review
(“IPR”) of patents owned by Cyandia, Inc. The then-Acting
Director of the United States Patent and Trademark Of-
fice, through her delegee, the Patent Trial and Appeal
Board, denied the petition, concluding such review would
be an inefficient use of resources given the progress of par-
allel district court proceedings between the parties involv-
ing the same patent. SAP now petitions for a writ of
mandamus.
Case: 25-132 Document: 53 Page: 1 Filed: 11/06/2025

-- 1 of 4 --

IN RE SAP AMERICA, INC. 2
In February 2024, Cyandia sued SAP alleging patent
infringement. SAP responded by asserting affirmative de-
fenses of invalidity based on IBM’s WebSphere product as
a prior art system. SAP also petitioned, in October 2024,
for IPR predicated on printed publications describing the
WebSphere product. At the time of the petitions, interim
guidance from the Director to the Board was in effect that
the Board would not “discretionarily deny institution in
view of parallel 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 PTAB.” Appx27. That guidance was
to “remain in place until further notice.” Appx33.
Relying on that guidance, SAP stipulated that should
IPR be instituted it would not pursue in the civil litigation
any ground for invalidity that it raised or reasonably could
have raised as a ground for unpatentability in the IPR pro-
ceedings. However, on February 28, 2025, following a
change in Presidential administrations, the Acting Direc-
tor rescinded the interim guidance. And on April 7, 2025,
the Board denied SAP’s petitions based on the discretion-
ary standard for denying IPR in situations of parallel civil
proceedings that was the subject of the now-rescinded in-
terim guidance. The Board reasoned, among other things,
that the trial date set in the civil litigation “is set to be ear-
lier than the projected deadline for entering a final written
decision” and that SAP’s proposed stipulation “has limited
practical effect in reducing the overlapping efforts here and
in the Litigation” because it would not prevent SAP from
later asserting its defenses in the civil litigation based on
the WebSphere system itself. Appx9, Appx11. On May 29,
2025, the Acting Director denied review. These petitions
followed.
“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
Case: 25-132 Document: 53 Page: 2 Filed: 11/06/2025

-- 2 of 4 --

IN RE SAP AMERICA, INC. 3
issue.” 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,
358 (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 based on the standard for evaluating whether
to institute in view of parallel civil litigation, see Mylan
Lab’ys Ltd. v. Janssen Pharmaceutica, N.V., 989 F.3d 1375,
1381 (Fed. Cir. 2021). We have noted possible exceptions
for “colorable constitutional claims,” id. at 1382, and cer-
tain statutory challenges, see Apple Inc. v. Vidal, 63 F. 4th
1, 12 n.5 (Fed. Cir. 2023). But SAP failed to raise its chal-
lenges before the agency. See 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”). And our decision
in In re Motorola Sols., Inc., No. 2025-134 (Fed. Cir. Nov.
6, 2025), ECF No. 44, forecloses relief on those issues.
Accordingly,
Case: 25-132 Document: 53 Page: 3 Filed: 11/06/2025

-- 3 of 4 --

IN RE SAP AMERICA, INC. 4
I T I S O RDERED T HAT :
The petition is denied.
November 6, 2025
Date
F OR THE COURT
Case: 25-132 Document: 53 Page: 4 Filed: 11/06/2025

-- 4 of 4 --