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  • Federal Circuit Denies Mandamus Petition Regarding IPR Institution Decision

    On Thursday, August 16, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion denying a patent challenger’s petition for a writ of mandamus in connection with the Patent Trial and Appeal Board’s decision not to institute requested inter partes reviews (IPR).  In re. Power Integrations, Inc., —F.3d—, (Fed. Cir. August 16, 2018).  The CAFC ruled that the mandamus petition was tantamount to an appeal of the non-institution decision, which is foreclosed by statute.

    An IPR is an administrative procedure by which one can challenge the validity of an issued patent.  The patent challenger files a petition in the Patent Office, the patent owner may respond, and the Patent Trial and Appeal Board (PTAB) decides whether to institute an IPR.  If an IPR is instituted, the PTAB ultimately issues a written decision finding the challenged claims either patentable or unpatentable.

    The America Invents Act, which created inter partes review, states that “the determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”  35 U.S.C. § 314(d).  The Supreme Court has confirmed that, except in unusual cases (e.g., where constitutional issues are implicated), the statute bars appeals from institution or non-institution decisions.  Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016).

    In this case, the PTAB denied the patent challenger’s petitions for institution of four IPRs.  The challenger then sought a writ of mandamus from the CAFC, arguing that it was not seeking appellate review of the non-institution decisions, but rather “seeking to vindicate its rights under the Administrative Procedure Act to a reasoned decision by the agency based on a proper consideration of all the relevant evidence in its petitions and application of the correct legal principals.”

    The CAFC denied the mandamus petitions.  The court found the petitions to be “nothing more than a challenge to the [PTAB’s] conclusion that the information presented in the petitions did not warrant review,” and held that “a disappointed petitioner cannot by-pass the statutory bar on appellate review simply by directing its challenge to asserted procedural irregularities rather than to the substance of the non-institution ruling.”

    The CAFC did leave open the possibility that mandamus relief might be appropriate, e.g. in a case involving constitutional issues or “some grave abuse of the statutory procedure.”  But in an ordinary case, mandamus relief from an institution or non-institution decision is no more available than is an appeal.