Docket No. 2018-144, -145, -146, -147
IPR2017-01903, -01904, -01944, -01975
O’MALLEY, BRYSON, CHEN
August 16, 2018
Brief summary: PI’s petitions petitions for a writ of mandamus challenging the PTAB’s decisions denying institution of IPRs of three patents denied (“this court has no reviewing authority over the agency’s non-institution decisions”).
Summary: Power Integrations (PI) filed petitions for a writ of mandamus challenging the PTAB’s decisions denying institution of IPRs of three patents, holding “PI had failed to show that any reference cited in the petitions was publicly accessible before” the shared June 4, 1997 “and thus…did not constitute invalidating prior art.” One reference, “Mammano”, “is a paper prepared by a presenter” and at an industry meeting, about which PI’s expert testified (by declaration) “that he attended the conference and received a copy…‘as part of the Technical Papers of the Conference.’” The PTAB determined that PI did not provide “any evidence that the…conference was intended for, or was attended by, persons skilled in the relevant art” (“not a ‘printed publication’ within the meaning of 35 U.S.C. § 102 and 311(b)”). Two other references, product-related data sheets, were also found not to “qualify as a printed publication” (e.g., it “bears no obvious indicia of public accessibility”, not shown “that it was PI’s standard practice to make such data sheets publicly accessible”, dates on the face of the reference were at best circumstantial evidence of its publication”). The PTAB therefore denied institution of the IPRs. The FC panel explained that under Cuozzo (US 2016), “section 314(d) bars review of a Board decision to institute” IPR “except in unusual circumstances” (“constitutional questions”, “other questions that reach…well beyond’ section 314(d)”). Here, though, “PI does not directly appeal the Board’s determinations not to institute” IPR but “[i]nstead…seeks to obtain review…through petitions for mandamus.” The FC panel explained that “a writ of mandamus is not intended to be simply an alternative means of appellate relief, particularly where relief by appeal has been specifically prohibited by Congress” (In re Dominion, FC 2014 (“appeals from decision not to institute [IPR] cannot be sidestepped simply by styling the request for review as a petition for mandamus”); Medtronic, FC 2016; GTNX, FC 2015 (CBM review)). PI argued it was seeking review to obtain “a proper consideration of all the relvant evidence in its petitions and application of the correct legal principles.” The FC panel explained that while it can review some decisions under the notice/explanation provisions of § 555(e), “this court has no reviewing authority over the agency’s non-institution decisions” (e.g., “PI understands perfectly well what the Board did…but it regards the Board’s actions as legally and factually incorrect, and it seeks this court’s intervention to overturn…A disappointed petitioner cannot by-pass the statutory bar on appellate review simply by directing its challenge to asserted procedural irregularities…this case involves no issues extraneous to the application of patent law principles or unpatentability based on printed publications, nor does it involve any ‘shenanigans’ on the part of the Board….”). PI’s petitions were therefore denied.