#administrative-procedure-act

#administrative-procedure-act

These three focused on the USPTO's February 2025 rescission of Sotera stipulation guidance offered a safe harbor against discretionary denial for petitioners involved in parallel district court litigation over the patent. The three-judge panel was almost the same of Judges Dyk, Linn (opinion author), and Cunningham (with Stoll replacing Cunningham on the Google decision) rejected constitutional and Administrative Procedure Act (APA) challenges to the policy change, holding that 35 U.S.C. § 314(d) renders institution decisions "final and nonappealable" and that mandamus is ordinarily unavailable to review such discretionary determinations.

The petition argues that Dir. Stewart's novel denial criteria were imposed without the notice-and-comment rulemaking required by the Administrative Procedure Act, exceed the Director's statutory authority under 35 U.S.C. § 314(a), and were applied retroactively to Instacart's petition in violation of due process. The petition argues that the NPRM is tacit admission of the rulemaking requirement.

The statutory language, 'shall issue,' mandates a separate preliminary analysis for public review and comment 'in any case' where the Commission issues a notice of proposed rulemaking and the $100 million threshold is surpassed.