Before O’Malley, Bryson, and Chen. Appeal from the Patent Trial and Appeal Board.
Summary: A writ of mandamus cannot be used as an alternative means of obtaining appellate review of institution decisions in IPRs, since Congress specifically prohibited such review in 35 U.S.C. § 314(d).
Power Integrations, Inc. (PI) filed petitions for a writ of mandamus after the PTAB denied institution of inter partes review of three patents owned by Semiconductor Components Industries, LLC. PI’s IPR petitions sought to invalidate the patents by citing three prior art references. The PTAB found that the references were not prior art because PI failed to show that the references were publicly accessible before the date of invention. The PTAB thus denied inter partes review.
The Federal Circuit denied the petitions for writ of mandamus. Under Section 314(d) “the determination by the Director whether to institute an inter partes review under this section shall be final and non-appealable”. The Federal Circuit held that a writ of mandamus is not intended to be simply an alternative means of obtaining appellate relief. The Court rejected PI’s argument that it was merely attempting to vindicate its rights under the Administrative Procedure Act to a reasoned decision by the agency, finding that the PTAB explained in detail its reasons for determining the relevant references were not prior art. The Federal Circuit 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”.