September 4, 2018

You Can’t Sidestep Nonappealability of Institution Decisions with Mandamus

By Bryan K. Wheelock, Principal

In In re: Power Integrations, Inc., [2018-144, 2018-145, 2018-146, 2018-147] (August 16, 2018), the Federal Circuit denied Power Integrations, Inc.’s petitions for writs of mandamus. The petitions challenge the decisions of the Patent Trial and Appeal Board denying the institution of Inter Partes Review of claims from three patents owned by Semiconductor Components Industries, LLC.

The Federal Circuit noted that the statute prohibits appeals of Board decisions not to institute, and said that Power Integrations was seeking to obtain review of the non-institution decisions through petitions for mandamus covering all four of the Board’s orders. However, a writ of mandamus is not intended to be simply an alternative means of obtaining appellate relief, particularly where relief by appeal has been specifically prohibited by Congress. To obtain the remedy of mandamus, a party must show that its right to issuance of the writ is “clear and indisputable,” and that there are no adequate alternative legal channels through which it may obtain that relief. Moreover, “even if the first two prerequisites have been met, the issuing court, in the exercise of its discretion, must be satisfied that the writ is appropriate under the circumstances.”

The Federal Circuit held that mandamus does not lie in this case, both because Power Integration has not shown a clear and indisputable right to issuance of the writ and because relief by way of mandamus would not be appropriate here. The statutory prohibition on appeals from decisions not to institute Inter Partes Review cannot be sidestepped simply by styling the request for review as a petition for mandamus.

While Power Integration complained that the Board did not explain itself well enough, the Federal Circuit said that Power Integration understands perfectly well what the Board did. The Federal Circuit further contends that Power Integrations views the Board’s actions as legally and factually incorrect, and therefore seeks the Federal Circuit’s intervention to overturn the Board’s decisions not to institute Inter Partes Review. The Federal Circuit found what Power Integration ultimately wants is not just to be given a more complete explanation of the Board’s action, but for the Federal Circuit to review that decision on the merits. The Federal Circuit said that the essence of Power Integration’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.

A disappointed petitioner cannot bypass 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. This is not to say that mandamus will never lie in response to action by the agency relating to the noninstitution of Inter Partes Review.

The circumstances described by the Supreme Court in Cuozzo as illustrations of issues for which an appeal might be justified (e.g., constitutional issues, issues involving questions outside the scope of section 314(d), and actions by the agency beyond its statutory limits) would be potential candidates for mandamus review as well.

This case, however, involved no issues extraneous to the application of patent law principles of unpatentability based on printed publications, nor does it involve any “shenanigans” on the part of the Board that might justify appellate review or review by mandamus.