Case: 25-144 Document: 29 Page: 1 Filed: 11/06/2025

NOTE: This order is nonprecedential.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 DYK, LINN, and STOLL, Circuit Judges. LINN, Circuit Judge. ORDER 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 Case: 25-144 Document: 29 Page: 2 Filed: 11/06/2025

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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 Case: 25-144 Document: 29 Page: 3 Filed: 11/06/2025

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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. Case: 25-144 Document: 29 Page: 4 Filed: 11/06/2025

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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.”). Case: 25-144 Document: 29 Page: 5 Filed: 11/06/2025

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raise any colorable constitutional challenge and is other- wise unreviewable. Accordingly, IT IS ORDERED THAT: The petition is denied. FOR THE COURT

November 6, 2025 Date