{"id":2183,"date":"2018-08-16T14:00:12","date_gmt":"2018-08-16T18:00:12","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2183"},"modified":"2018-09-03T15:32:01","modified_gmt":"2018-09-03T19:32:01","slug":"you-cant-sidestep-nonappealability-of-institution-decisions-with-mandamus","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2183","title":{"rendered":"You Can’t Sidestep Nonappealability of Institution Decisions with Mandamus"},"content":{"rendered":"

In re: Power Integrations, Inc.<\/a>, [2018-144, 2018-145, 2018-146, 2018-147] (August 16, 2018), the Federal Circuit denied\u00a0Power Integrations, Inc. petitions for\u00a0writs of mandamus, challenging . The petitions challenge the decisions\u00a0of the Patent Trial and Appeal Board denying the institution\u00a0of inter partes review of claims from three patents\u00a0owned by Semiconductor Components Industries, LLC.<\/p>\n

The Federal Circuit noted that the statute prohibits appeals of Board decisions not to institute, and said that Power Integrations was\u00a0seeking to obtain\u00a0review of the non-institution decisions through petitions\u00a0for mandamus covering all four of the Board\u2019s orders. However,\u00a0a writ of mandamus is not intended to be simply an\u00a0alternative means of obtaining appellate relief, particularly\u00a0where relief by appeal has been specifically prohibited\u00a0by Congress.\u00a0\u00a0To obtain the remedy of mandamus, a party must\u00a0show that its right to issuance of the writ is \u201cclear and\u00a0indisputable,\u201d and that there are no adequate alternative\u00a0legal channels through which it may obtain that relief.\u00a0Moreover, \u201ceven if the first two prerequisites have been\u00a0met, the issuing court, in the exercise of its discretion,
\nmust be satisfied that the writ is appropriate under the\u00a0circumstances.\u201d<\/p>\n

The Federal Circuit held that mandamus does not lie in this case, both\u00a0because Power Integration has not shown a clear and indisputable right\u00a0to issuance of the writ and because relief by way of mandamus\u00a0would not be appropriate here. The statutory prohibition on appeals from decisions not to\u00a0institute inter partes review cannot be sidestepped simply\u00a0by styling the request for review as a petition for mandamus.<\/p>\n

While Power Integration complained the Board did not explain itself well enough, the Federal Circuit\u00a0said that Power Integration\u00a0understands perfectly\u00a0well what the Board did, but it regards the Board\u2019s actions\u00a0as legally and factually incorrect, and it seeks this
\ncourt\u2019s intervention to overturn the Board\u2019s decisions not\u00a0to institute inter partes review. The Federal Circuit found what Power Integration ultimately\u00a0wants is not just to be given a more complete explanation\u00a0of the Board\u2019s action, but for the Federal Circuit to review that\u00a0decision on the merits.\u00a0\u00a0The Federal Circuit said that the essence of Power Integration\u2019s claim\u2014\u00a0that the Board\u2019s analysis \u201cis premised on an incorrect\u00a0legal standard or a misapplication of that standard\u201d\u2014is\u00a0nothing more than a challenge to the Board\u2019s conclusion\u00a0that the information presented in the petitions did not\u00a0warrant review.<\/p>\n

A disappointed petitioner cannot by-pass the statutory\u00a0bar on appellate review simply by directing its challenge\u00a0to asserted procedural irregularities rather than to\u00a0the substance of the non-institution ruling.\u00a0\u00a0This is not to say that mandamus will never lie in\u00a0response to action by the agency relating to the noninstitution\u00a0of inter partes review. The circumstances\u00a0described by the Supreme Court in Cuozzo as illustrations\u00a0of issues for which an appeal might be justified (e.g.,\u00a0constitutional issues, issues involving questions outside\u00a0the scope of section 314(d), and actions by the agency\u00a0beyond its statutory limits) would be potential candidates\u00a0for mandamus review as well.\u00a0 However this case involved no issues extraneous to the\u00a0application of patent law principles of unpatentability\u00a0based on printed publications, nor does it involve any\u00a0\u201cshenanigans\u201d on the part of the Board that might justify\u00a0appellate review or review by mandamus.<\/p>\n","protected":false},"excerpt":{"rendered":"

In re: Power Integrations, Inc., [2018-144, 2018-145, 2018-146, 2018-147] (August 16, 2018), the Federal Circuit denied\u00a0Power Integrations, Inc. petitions for\u00a0writs of mandamus, challenging . The petitions challenge the decisions\u00a0of the Patent Trial and Appeal Board denying the institution\u00a0of inter partes … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[26],"tags":[],"class_list":["post-2183","post","type-post","status-publish","format-standard","hentry","category-inter-partes-review"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2183","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2183"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2183\/revisions"}],"predecessor-version":[{"id":2184,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2183\/revisions\/2184"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2183"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2183"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2183"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}