by Dennis Crouch
In re Cisco Systems Inc. (Fed. Cir. 2020)
PTAB denied Cisco’s petitions to institute inter partes review (IPR) against two patents owned by Tel Aviv Univ. (Ramot). The statute is clear that the decision of whether to institute is not appealable, but Cisco filed for writ of mandamus with the Federal Circuit. Mandamus has now been denied.
The Statute empowers the USPTO Director to decide whether or not to institute an IPR. “The Director shall determine whether to institute an inter partes review.” 35 U.S.C. § 314(b). Before instituting, the Director must first find a “reasonable likelihood” that one-or-more claims will be cancelled. However, the statute does not expressly require that the Director grant review of all petitions that meet that requirement, and the PTO believes that the statute provides the Director discretionary power in this process. In a set of regulations, the PTO Director delegated the institution decision to the PTAB. The PTAB, in turn, has established a set of factors that it uses to determine whether to grant an IPR, including efficiency, fairness, and merit.
Parallel District Court Litigation: In this case, the PTAB declined CISCO’s petitions on the grounds that parallel district court litigation was moving forward with a trial set to occur well-before the PTAB’s likely final written decision. In its decision, the PTAB noted that the same or very similar issues had all been briefed and were being presented in the district court and that “instituting would be an inefficient use of Board, party, and judicial resources.”
On mandamus, Cisco argued that the PTO’s approach here is unlawful for a variety of reasons, including violation of the America Invents Act as well as the Administrative Procedures Act. [CiscoBriefingShowCause].
For its part, the Federal Circuit has new refused to delve into the merits — holding instead that the appellate court generally lacks jurisdiction to hear Cisco’s appeal.
This court generally does not have jurisdiction to review the agency’s determination concerning whether proceedings should have been instituted.
The court went on to suggest that it may still have mandamus jurisdiction, but that Cisco “has not met the high standard for mandamus relief.”
At least some of the patents in the case are in the midst of ex parte reexaminations that have been ongoing for some time. The trial is set to begin with Voir Dire on December 7, 2020. Matthew Gaudet (Duane Morris) is lead trial counsel for Cisco with Henry Bunslow (Bunslow De Mory) on the other side.
= = = =
The court issued parallel denial orders in Google LLC v. Uniloc 2017 LLC (20-2040) and Apple Inc. v. Maxell, Ltd. (20-2132).