Absent extraordinary circumstances, the Federal Circuit will not review Patent Trial and Appeal Board decisions refusing to institute inter partes review. The statute and a 2016 Supreme Court decision prohibit such review. 35 U.S.C. § 314(d); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140–42 (2016) (clarifying, however, that appellate review is appropriate to address "shenanigans"). The Federal Circuit has thus repeatedly held that parties may not sidestep this prohibition by styling an appeal as a petition for a writ of mandamus.1 The court reiterated as much again in In re Power Integrations, Inc., Appeal Nos. 2018‑144, ‑145, ‑146, ‑147 (Fed. Cir. Aug. 16, 2018).
Power Integrations, Inc., filed a series of IPR petitions that the Board denied. Documents supporting the petitioned grounds were not, according to the Board, prior art. The Board thus concluded that Power's petitions did not present a threshold showing that Power was reasonably likely to succeed in canceling any claims during inter partes review. Power unsuccessfully sought the Board's reconsideration. Faced with the prohibition against appeals, Power then unsuccessfully petitioned the Federal Circuit for writs of mandamus ordering the Board to reconsider its non-institution decisions.
To obtain mandamus relief, the petitioner must establish (i) a clear and indisputable right to the relief, and (ii) a lack of alternative ways to obtain that relief, and the petitioned court must be satisfied the writ is appropriate. Power and the Board disagreed on whether Power had sufficiently proven the documents were publicly accessible such that they constitute prior art. Power complained that the Board's conclusions were not "based on a proper consideration of all the relevant evidence in its petitions and application of the correct legal principles." In seeking mandamus relief, Power wasn't asking the court to order inter partes review, but to order the Board to more fairly assess the petitions.
The court denied Power's mandamus petitions. In support, the court explained that mandamus may not be used as a substitute for an appeal:
The essence of [Power's] claim—that the Board's analysis "is premised on an incorrect legal standard or a misapplication of that standard"—is nothing more than a challenge to the Board's conclusion that the information presented in the petitions did not warrant review. And in Dominion Dealer Solutions, this court made clear that where section 314(d) bars an appeal from a Board decision not to institute inter partes review, the petitioning party "has no 'clear and indisputable' right to challenge [the] non-institution decision directly in this court, including by way of mandamus."
Slip Op. at 9. Mandamus relief might be appropriate if the Board institutes IPR beyond a statutory limit (e.g., after the expiration of the time bar, partial institution, etc.). Here, however, the court explained that the disappointed petitioner could not end-run around the statutory prohibition against judicial review merely by masquerading its appeal as a mandamus petition that complains about "procedural irregularities" in the Board's analyses unaccompanied by "some grave abuse of the statutory procedure," or shenanigans. The scope of activity constituting such abuse or shenanigans remains a mystery. But Power Integrations at least tells us that the Board's non-institution decisions premised on its conclusion that a document is not prior art is effectively final, even if potentially wrong.
Power would have been better off had the Board issued final written decisions on the same bases as its non-institution decisions. At least then, Power could have appealed the substantive issue and perhaps prevailed, as have others. See e.g., Medtronic Inc. v. Barry, 891 F.3d 1361 (Fed. Cir. 2018) (discussed here); see also, GoPro, Inc. v. Contour IP Holding LLC, Appeals 2017‑1894, ‑1936 (Fed. Cir. July 27, 2018).
Footnote
1 In re Dominion Dealer Solutions, LLC, 749 F.3d 1379, 1381 (Fed. Cir. 2014); see also, In re Procter & Gamble Co., 749 F.3d 1376, 1377 (Fed. Cir. 2014); GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 1312–13 (Fed. Cir. 2015); Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., 839 F.3d 1382, 1386 (Fed. Cir. 2016).
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