In Re TESSELL, INC.

• Court: Court of Appeals for the Federal Circuit
• Decided: February 24, 2026
• Docket: 26-117
• Status: Unpublished

Opinion

Case: 26-117 Document: 33 Page: 1 Filed: 02/24/2026

NOTE: This order is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

In Re TESSELL, INC., Petitioner ______________________

2026-117 ______________________

On Petition for Writ of Mandamus to the United States Patent and Trademark Office in Nos. IPR2025-00298, IPR2025-00322, IPR2025-00732, and IPR2025-00733. ______________________

ON PETITION AND MOTION ______________________

Before TARANTO, MAYER, and STARK, Circuit Judges. PER CURIAM. ORDER Tessell, Inc. sought inter partes review (“IPR”) of pa- tents owned by Nutanix, Inc. that name Tessell’s founders and employees as inventors. The Acting Director of the United States Patent and Trademark Office (“PTO”) denied institution, determining review would not be an appropri- ate use of agency resources. Tessell now seeks a writ of mandamus to compel the Director to vacate those decisions and order further proceedings. The Director and Nutanix oppose. We deny Tessell’s petition. Case: 26-117 Document: 33 Page: 2 Filed: 02/24/2026

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I. The four patents at issue in this case name Bal- asubrahmanyam Kuchibhotla, Kamaldeep Khanuja, Bakul Banthia, Sujit Menon, Maneesh Rawat, and Sagar Son- takke as inventors. The applications that would eventually be issued as the challenged patents here were assigned to Nutanix—the company Messrs. Kuchibhotla, Khanuja, Banthia, Menon, Rawat, and Sontakke worked for at the time of the inventions. In 2021, Messrs. Kuchibhotla, Kha- nuja, and Banthia left Nutanix and founded Tessell. Messrs. Menon, Rawat, and Sontakke would later leave Nutanix to join them as Tessell employees. Between December 2024 and March 2025, Tessell filed four petitions seeking IPR of the patents.1 In June 2025, the Patent Trial and Appeal Board instituted IPR proceed- ings on one of the patents (U.S. Patent No. 11,860,818). In August 2025, however, the Acting Director2 vacated that decision and denied Tessell’s petition. She recognized that “[a]ssignor estoppel does not apply in inter partes reviews,” ECF No. 2 at 44, but, in exercising her discretionary au- thority over whether to institute proceedings, concluded that it would not be “an efficient use of Office resources to institute an IPR on a patent where the inventors of that patent now advocate for its unpatentability,” id. at 45. The Acting Director subsequently granted Nutanix’s requests to discretionarily deny Tessell’s petitions

1 Nutanix filed a lawsuit in the United States Dis- trict Court for the Northern District of California against Tessell alleging infringement of the patents. Those pro- ceedings have been stayed since March 2025 pending arbi- tration. Nutanix, Inc. v. Tessell, Inc., No. 3:24-cv-01729 (N.D. Cal. Mar. 12, 2025), Dkt. No. 63. 2 John A. Squires was subsequently confirmed as PTO Director. Case: 26-117 Document: 33 Page: 3 Filed: 02/24/2026

IN RE TESSELL, INC. 3

challenging the remaining patents for the same reasons. Tessell then filed this petition seeking a writ to compel the PTO to vacate those decisions, to order the Director to re- instate the decision to institute IPR on the ’818 patent, and to direct the PTO to consider its petitions on the other pa- tents on “the merits.” Id. at 36–37. II. The standard for mandamus relief is demanding. Tes- sell must show, among other things, that it has a clear and indisputable right to the relief it seeks. Cheney v. U.S. Dist. Ct. for D.C., 542 U.S. 367, 380–81 (2004). Given Con- gress committed institution decisions to the Director’s dis- cretion, even when the statutory pre-conditions are present, SAS Inst., Inc. v. Iancu, 584 U.S. 357, 366 (2018); Apple Inc. v. Squires, ___ F.4th ___, 2026 WL 406495, at *1 (Fed. Cir. Feb. 13, 2026), and protected the exercise of that discretion from review by making such determinations “fi- nal and nonappealable,” 35 U.S.C. § 314(d), we have recog- nized that mandamus is ordinarily unavailable for review of institution decisions. Mylan Lab’ys Ltd. v. Janssen Pharmaceutica, N.V., 989 F.3d 1375, 1382 (Fed. Cir. 2021). We noted an exception for “colorable constitutional claims,” id. at 1382, but cannot say that Tessell has presented such a claim here. Tessell primarily argues that the PTO exceeded its au- thority under 35 U.S.C. § 311(a), which provides, in rele- vant part, that “a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent.” Tessell relies on Arista Net- works, Inc. v. Cisco Systems, Inc., 908 F.3d 792, 804 (Fed. Cir. 2018), a case in which this court rejected an interpre- tation of § 311(a) that would bar an assignor from filing a petition for IPR. But Arista is materially distinguishable from the circumstances here, because Arista involved the review of a final written decision and not a discretionary denial of institution. Moreover, at bottom, Tessell is Case: 26-117 Document: 33 Page: 4 Filed: 02/24/2026

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challenging whether the PTO erred in applying a statute related to decisions on institution. Given the general bar on review of such challenges, see Thryv, Inc. v. Click-to-Call Techs., LP, 590 U.S. 45, 58–59 (2020), we cannot say Tes- sell has shown a clear right to relief. Tessell also argues that the PTO violated the Due Pro- cess Clause because the Director’s prior designation of the Patent Trial and Appeal Board’s decision in Athena Auto- mation Ltd. v. Husky Injection Molding Systems Ltd., No. IPR2013-00290 (P.T.A.B. Oct. 25, 2013), as precedential placed a substantive limitation on the Acting Director’s dis- cretion. But we rejected an analogous argument in In re Motorola Solutions, Inc., 159 F.4th 30 (Fed. Cir. 2025)— where the petitioner was similarly claiming a property in- terest in rescinded Director guidance binding on only the Board for its exercise of delegated non-institution author- ity. Like the Director’s prior interim guidance in Motorola, here the Director’s direction to the Board in the form of a precedential Board decision to govern later Board decisions does not require the PTO to reach any particular outcome on a petition or otherwise create a cognizable property in- terest in IPR review that might conceivably give rise to a colorable due process claim. See Apple, ___ F.4th ___, 2026 WL 406495, at *8 (noting that such guidance “leaves a pa- tent challenger’s actual legal rights and obligations un- changed” and “what they would be if Congress had not enacted the IPR regime (which it enacted only with pro- tected Director discretion about institution)”). Accordingly, IT IS ORDERED THAT: (1) All motions for leave to file briefs amici curiae are granted and the corresponding briefs are accepted for fil- ing. Case: 26-117 Document: 33 Page: 5 Filed: 02/24/2026

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(2) The petition is denied. FOR THE COURT

February 24, 2026 Date