In re VOLKSWAGEN GROUP OF AMERICA, INC.

Case: 26-123 Document: 27 Page: 1 Filed: 03/19/2026

NOTE: This order is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________ In Re VOLKSWAGEN GROUP OF AMERICA, INC., Petitioner ______________________ 2026-123 ______________________ On Petition for Writ of Mandamus to the United States Patent and Trademark Office in No. IPR2025-00925. ______________________ ON PETITION ______________________ Before DYK, REYNA, and HUGHES, Circuit Judges.

PER CURIAM.

ORDER Volkswagen Group of America, Inc. sought inter partes review (“IPR”) of Longhorn Automotive Group LLC’s pa- tent in response to being sued for infringement. After con- cluding IPR would not be an appropriate use of agency resources, the Acting Director of the United States Patent and Trademark Office (“USPTO”) granted Longhorn’s re- quest for discretionary denial.1 Volkswagen now petitions

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Congress committed institution decisions to the Direc- tor’s discretion, even when the statutory pre-conditions are present, SAS Inst., Inc. v. Iancu, 584 U.S. 357, 366 (2018); Apple Inc. v. Squires, 166 F.4th 1349, 1353 (Fed. Cir. 2026). It protected the exercise of that discretion from re- view by making such determinations “final and nonappeal- able,” 35 U.S.C. § 314(d), relief by means of mandamus or direct appeal is ordinarily unavailable, Mylan Lab’ys Ltd. v. Janssen Pharmaceutica, N.V., 989 F.3d 1375, 1382 (Fed. Cir. 2021). Volkswagen, nevertheless, urges relief here on the ground that “Congress delegated legislative power when it granted the Director the power to decide whether to adjudicate disputes involving patent validity,” and also gave the Director “unbounded discretion to deny institu- tion of” IPR, and thus “Congress violated the nondelegation doctrine.” Pet. at 4; Reply at 8.2 This is a constitutional issue as to which review is available. Mylan, 989 F.3d at 1382.

It is true, as the Supreme Court has explained, Con- gress provided “no mandate to institute” IPR—instead, the Director’s “decision to deny a petition is a matter commit- ted to [his] discretion.” Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 273 (2016) (citing 5 U.S.C. § 701(a)(2); 35 U.S.C. § 314(a)). But that exercise of discretion does not necessarily involve legislative power. In fact, the Court has

2 Volkswagen did not raise this challenge below. 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.”). Regardless, entitlement to relief has not been established for the reasons provided herein.

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IN RE VOLKSWAGEN GROUP OF AMERICA, INC. 3 explained, to the contrary, that “an agency’s refusal to in- stitute proceedings,” as is the situation here, “shares to some extent the characteristics of the decision of a prose- cutor in the Executive Branch not to indict—a decision which has long been regarded as the special province of the Executive Branch, inasmuch as it is the Executive who is charged by the Constitution to ‘take Care that the Laws be faithfully executed.’” Heckler v. Chaney, 470 U.S. 821, 831– (1985) (quoting U.S. Const., Art. II, § 3); see Apple, 166 F.4th at 1360; see also TransUnion LLC v. Ramirez, 594 U.S. 413, 430 (2021) (“[T]he choice of how to prioritize and how aggressively to pursue legal actions . . . falls within the discretion of the Executive Branch[.]”), Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 584 U.S. 325, 336 (2018) (“When the PTO adjudicates the patentability of inventions, it is exercising the executive power.” (cleaned up)). Volkswagen identifies no contrary authority.

Volkswagen relies on Jarkesy v. SEC, 34 F.4th 446 (5th Cir. 2022), aff’d on other grounds, 603 U.S. 109 (2024), which dealt with the Securities and Exchange Commission (“SEC”)’s authority to bring enforcement proceedings within either the agency or an Article III court. The Fifth Circuit’s majority drew a sharp distinction between, on the one hand, “the ability to determine which subjects of its en- forcement actions are entitled to Article III proceedings with a jury trial,” “a delegation of legislative power,” id. at 4613 (citing Crowell v. Benson, 285 U.S. 22, 50 (1932)), and, on the other hand, the discretion whether to launch an en- forcement action in the first place, which constitutes

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4 IN RE VOLKSWAGEN GROUP OF AMERICA, INC.

“executive, not legislative, power,” id. at 462. Applying that distinction, the Fifth Circuit’s majority in Jarkesy held that the challenged scheme was unconstitutional because Congress delegated the former authority to the SEC with- out providing an intelligible principle to guide the agency’s decision as to which defendants would receive the right to a jury trial. Id. The present situation is materially different in that it does not involve whether a procedure such as a jury trial should be allowed but rather involves a decision whether to institute proceedings. Congress set the options for post- grant challenges to patent validity (and accompanying pro- cedures), and the Director merely decides whether the USPTO will take “a second look at an earlier administra- tive grant of a patent.” Oil States, 584 U.S. at 336 (cleaned up); see Regents of Univ. of Minn. v. LSI Corp., 926 F.3d 1327, 1339 (Fed. Cir. 2019). And, unlike in Jarkesy, “[a] non-institution decision has no legal effect on the underly- ing patent rights and obligations,” “leav[ing] a patent chal- lenger’s actual legal rights and obligations unchanged,” Apple, 166 F.4th at 1361. Thus, Volkswagen has provided no persuasive basis to conclude the Director exercises leg- islative power here.4 Accordingly,

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IN RE VOLKSWAGEN GROUP OF AMERICA, INC. 5

IT IS ORDERED THAT: The petition is denied.

FOR THE COURT

March 19, 2026 Date