In re Proctor & Gamble: Mandamus Petition Is Not Proper Means to Challenge Institution of Inter Partes Review

Category: Post-Grant Proceedings    
 By: Eric Paul Smith, Contributor 
TitleIn re The Proctor & Gamble Co., Misc. Docket No. 121 (Fed. Cir. Apr. 24, 2014).
IssueWhether "a decision by the Director [of the United States Patent & Trademark Office ('USPTO')] to institute inter partes review[s]" of the patents at issue "may [] be directly reviewed by this court through the extraordinary means of mandamus."
In re The Proctor & Gamble Co. at *2 (emphasis removed from original).
Holding"We conclude that immediate review of such a decision is not available in this court. We therefore deny P&G’s petition for mandamus relief."
Id. at *2.
Procedural History"P&G owns three patents that claim systems or methods for whitening teeth—U.S. Patent Nos. 5,891,453, 5,894,017, and 7,122,199. Those patents have been involved in two district-court actions relevant here. First, P&G sued Team Technologies, Inc., alleging infringement of the three patents, in the United States District Court for the Southern District of Ohio. Clio then filed a declaratory-judgment action against P&G in the United States District Court for the District of New Jersey, alleging that the same patents were invalid, unenforceable, or not infringed. . . . P&G quickly amended its complaint in the Ohio action to add Clio as a defendant. . . . Team Technologies and Clio then moved in that action for a stay or a transfer to the District of New Jersey[;] the district court in Ohio denied both motions. . . . Clio filed a motion with the New Jersey district court to dismiss its declaratory-judgment action there without prejudice . . . [;] the New Jersey district court granted that motion. . . . Clio timely petitioned the Director to institute inter partes reviews of the three patents under 35 U.S.C. §§ 311-319. P&G responded to Clio’s three petitions, arguing that Clio’s earlier declaratory-judgment action involving the same three patents, though it had been voluntarily dismissed, barred the institution of inter partes reviews under section 315(a). The Director, through the Patent Trial and Appeal Board as her delegee, disagreed and granted all three petitions, deciding under section 314(a) & (b) to institute the requested inter partes reviews. The Board explained that, because Clio’s declaratory-judgment action was dismissed without prejudice, in the context of § 315(a)(1), the action never existed. P&G asked for rehearing, which the Board denied. In February 2014, P&G filed the present petition for a writ of mandamus in this court under 28 U.S.C. § 1651."
In re The Proctor & Gamble Co. at *2-4 (citations, internal quotation marks, and footnotes omitted).
Legal Reasoning (Taranto, Lourie, Prost)
Three Conditions Required for Mandamus Review"The remedy of mandamus is a drastic one, to be invoked only in extraordinary situations. Accordingly, three conditions must be satisfied before it may issue. [1] The petitioner must show a clear and indisputable right to relief. [2] The petitioner must lack adequate alternative means to obtain the relief it seeks. And even if the first two prerequisites have been met, [3] the issuing court, in the exercise of its discretion, must be satisfied that the writ is appropriate under the circumstances."
In re The Proctor & Gamble Co. at *4 (citations and internal quotation marks omitted).
No Clear and Indisputable Right to Relief"Our analysis in [St. Jude Medical, Cardiology Div., Inc. v. Volcano Corp., No. 2014-1183 (Fed. Cir. Apr. 24, 2014)] and [In re Dominion Dealer Solutions, LLC, No. 2014-109 (Fed. Cir. Apr. 24, 2014)], in which we reject requests for immediate review of the Director’s decision not to institute an inter partes review, applies equally to the Director’s decision to institute such a review. In particular, what we explained in St. Jude about chapter 31 generally, section 314(d) particularly, and our jurisdictional statute requires that we may not hear an appeal from the Director’s decision to institute an inter partes review. Nor is there a clear and indisputable right to this court’s immediate review of a decision to institute an inter partes review, as would be needed for mandamus relief, just as Dominion holds that there is no such right with respect to a non-institution decision. Moreover, this is not one of the rare situations in which irremediable interim harm can justify mandamus, which is unavailable simply to relieve P&G of the burden of going through the inter partes review."
Id. at *4-5 (ultimate citation removed).
"P&G’s mandamus petition is not a proper vehicle for challenging the institution of inter partes review."
In re The Proctor & Gamble Co. at *5.

Contributor Notes
Separate Questions Identified but Not Decided"[1] It is a separate question whether section314(d) means that the decision to institute the review is unchallengeable later—if the Board reaches a decision under section 318(a) and an appeal is taken under section 319. Perhaps section 314(d)’s broad language precludes all judicial review of the institution decision, even in an eventual section 319 appeal. We need not decide that question, which can be addressed in a section 319 appeal. [2] Nor need we address whether an immediate challenge could be brought in district court."  
In re The Proctor & Gamble Co. at *5.
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