The Software IP Report

Federal Circuit Will Not Allow Mandamus Relief Of PTAB Decisions Not To Initiate Inter Partes Review

By George Schooff

Categories: The Software IP Report, USPTO Post-Issue Proceedings

In In re Dominion Dealer Solutions. LLC, No. 109 (Fed. Cir. Apr. 24, 2014), Dominion petitioned the Patent Office Trial and Appeal Board (“PTAB”) to institute inter partes review of five patents.  The PTAB denied them all.  Dominion petitioned the Federal Circuit for a writ of mandamus.  Id. at 2.

The Federal Circuit denied Dominion’s request.  As a preliminary matter, the court noted that a mandamus remedy “is a drastic one, to be invoked only in extraordinary circumstances.”  Id. at 3.  It requires petitioner to show a “clear and convincing indisputable right to relief.”  Id. at 3-4.  And, citing its decision in St. Jude, the court held Dominion had no “clear and indisputable” right to challenge the PTAB’s decision denying its petitions for inter partes review.

The take away?

A Virginia district court recently held that judicial review of a PTAB non-institution decision is not permitted under the Administrative Procedure Act, the Declaratory Judgment Act, or the mandamus statute applicable to district courts.  Dominion Dealer Solutions, LLC v. Lee, No. 3:13CV699 (E.D. Va. Apr. 18, 2014).  This, in combination with the Federal Circuit’s decisions in Dominion and St. Jude, suggest that the PTAB’s decision not to initiate inter partes review is effectively immune from challenge.  So, petitioners, privies and other real parties in interest that end up on the wrong end of a non-institution decision will be left to hope that some unrelated party decides to take up the challenge.