In re Bd. of Tr. of the Univ. of Ill.: Writ to Vacate Institution of an Inter Partes Review Denied

Category: Post-Grant Proceedings  
 By: Karthik Subramanian, Contributor 
TitleIn re Bd. of Tr. of the Univ. of Ill., No. 2014-122 (Fed. Cir. May 5, 2015) (non-precedential).
Issue“The Board of Trustees for the University of Illinois (“University”) petitions for a writ of mandamus directing the United States Patent and Trademark Office (“PTO”) and its Patent Trial and Appeal Board (“Board”) to withdraw its orders instituting inter partes review in cases IPR2013-401 and IPR2013-404.”
In re Bd. of Tr. of the Univ. of Ill. at *1.
Holding“The petition is denied [because a party seeking issuance of a writ to vacate an inter partes review cannot establish a clear and indisputable right to relief].”
Id. at 3 (text added).
Procedural History“In its petition, the University argues that the institution for inter partes review is barred under 35 U.S.C. § 315(a)(1), which provides such review “may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” In rejecting that argument, the Board, acting as the Director’s delegee, found that the declaratory judgment action in question did not act as a bar under § 315(a)(1) because it had been dismissed without prejudice.”
In re Bd. of Tr. of the Univ. of Ill. at *2.
Legal Reasoning (Lourie, Dyk, Reyna)
Our analysis in In re The Proctor & Gamble Company, __ F. 3d __, No. 2014-121 (Fed. Cir. Apr. 24, 2014) controls this case. In that case, as here, the Director, through her delegee, instituted inter partes review, rejecting the patent holder’s argument that a prior declaratory judgment action barred review even though the action had been dismissed without prejudice. We explained that because the applicable statutory scheme precludes the court from hearing an appeal from the Director’s decision to institute an inter partes review, a party seeking issuance of the writ to vacate institution of such proceedings cannot establish a clear and indisputable right to relief.
In re Bd. of Tr. of the Univ. of Ill. at *2.
The petition is denied.
Id. at *3.
 Image Attribution Statement: RRZEicons, “Document-denied,” available under a Creative Commons Attribution-Share Alike 3.0 Unported license, http://commons.wikimedia.org/wiki/File:Document-denied.svg (July 19, 2014) (image edited).
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