Drawing the Fall Line: No Mandamus for Real-Party-In-Interest Argument

Fall Line Patents, LLC v. Unified Patents, LLC (Fed. Cir. 2020) [FallLine]

In this case, the court begins with a lamentation that a Federal Circuit panel is “bound by the determinations of a prior panel, unless relieved of that obligation by an en banc order of the court or a decision of the Supreme Court.” Quoting Deckers Corp. v. United States, 752 F.3d 949 (Fed. Cir. 2014).*

Here, Fall Line appealed against the PTAB’s real party-in-interest determinations. That argument was recently foreclosed in ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020).  Fall Line attempted to skirt the decision by asking the court to use its “mandamus jurisdiction” to hear the case.  On appeal, the Federal Circuit concluded that would be improper in this case. Although mandamus may be proper to review “institution decisions that implicate constitutional or jurisdictional violations” — mandamus is not proper for an “ordinary dispute” over the construction of an “institution-related statute.”  Fall Line’s argument would have carried more weight – but for Thryv.

While we [previously held] that statutory prerequisites to the Director’s authority to institute an IPR were not related to institution within the meaning of § 314(d), the Supreme
Court disagreed with that conclusion in Thryv.

Slip Op.

Fall Line also argued that the Arthrex severance was inadequate to cure the appointments clause problem with PTAB judges. Here, the court concluded that argument was considered and rejected in the Arthrex decision itself. “As a panel, we are bound.”

Still, Fall Line will get a new trial at the PTAB under Arthrex.

= = = =

Note here that the opening line of the case doesn’t actually apply to this decision because it was issued with the following caveat: “This disposition is nonprecedential.”

5 thoughts on “Drawing the Fall Line: No Mandamus for Real-Party-In-Interest Argument

  1. 3

    But a D.C. considering if statutory estoppel applies from a final IPR decision is not going to be bound by an unappealable PTAB decision made with little or no discovery of a real party in interest issue.

    1. 3.1

      I think you’re right, Paul. Nothing in the AIA estoppel statute (315(e)) should foreclose a district court from making its own determination of who is, or is not, a real party in interest or privy of the IPR petitioner for purposes of applying AIA statutory estoppel.

      The plain terms of the IPR estoppel statute appear to apply only to substantive issues of unpatentability that were or reasonably could have been raised during the IPR. There doesn’t seem to be anything in the statute that binds the parties in the district court to privity or RPI determinations made by the PTAB. PTAB findings on RPI/privity may have some persuasive value to the district court, of course, but they shouldn’t be binding.

      1. 3.1.1

        Nothing?

        What if you apply the reasoning that the courts have already put on the table in regards to “related to decision to institute?”

  2. 2

    The opinion was authored by Judge O’Malley.

  3. 1

    In this case, Judge Moore begins with a lamentation that a Federal Circuit panel is “bound by the determinations of a prior panel, unless relieved of that obligation by an en banc order of the court or a decision of the Supreme Court.” Quoting Deckers Corp. v. United States, 752 F.3d 949 (Fed. Cir. 2014).*

    Good luck Judge Moore applying that to ANY of the Gordian Knot mess of decisions in regards to 35 USC § 101.

    Chief Judge Prost has done an absolutely abysmal job of making sure THAT piece of legal order has been followed.

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