Federal Circuit: No Appeal of IPR Institution Denial, even If Denied for Extra-Statutory Reasons

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).

82 thoughts on “Federal Circuit: No Appeal of IPR Institution Denial, even If Denied for Extra-Statutory Reasons

  1. 4

    “2. No Discernable Increase in 112 Rejections”

    I look forward to future entries in the Patently-O Journal of Expected Conclusions.

    “The AIA did not result in more improper multiple dependent claim rejections.”

    Alice did not cause a bump in Obviousness-type double patenting rejections.”

    “The 2019 eligibility guidance had no discernable effect on sunspots.”

    1. 4.1

      Lol – except Ben, there were BOTH an eligibility guidance AND a 112 guidance.

      Being smarmy loses its charm when you miss a critical point.

  2. 3

    It is kind of interesting to think of the phrase “and no fact tried by a jury, shall be otherwise re-examined in any Court of the United States, than according to the rules of the common law.”

    How does one square that with the PTO deciding claims are invalid after a jury has held they are not invalid? What rules of common law would allow that?

    1. 3.1

      Juries find that alleged infringers have failed to prove invalidity. They don’t find that a patent is valid in the face of all possible grounds that could ever be raised throughout the multiverse. Does this help?

      1. 3.1.1

        But it can be the same D.

      2. 3.1.2

        Wow, a post that I agree with NS II.

        In fact, if my earlier post is salvaged from the filter, the alignment could be seen to be shocking.

    2. 3.2

      PTAB in the past has skirted this issue by claiming BRC of the claims means it can ignore the Courts, ergo a 2 ships passing in the night fig leaf of legal logic. Now the PTAB is required to follow the “law” of claim construction (correct?), it can’t avoid res judicata, comity, etc. It’s progress, IMHO.

  3. 2

    The only thing better than a massive no-comment guest post is two massive no-comment posts in a row!

    Do the authors request to have no comments, or is it done on the blog’s initiative?

    1. 2.1

      The two are related in content, and I have seen the Patently O journal articles often posted with the ‘no comments’ option.

      My guess is that the second went no comments due to the subject matter being patent eligibility. That subject tends to bring out the more rancorous and heated commentary.

      1. 2.1.1

        I’d guess the blog person was protecting the authors of the papers from fair criticism of their methods and questionable ethics.

        The reality is that these professors publish whatever they want with no consequences if they are unethical and no one to watch over them and their law schools will not entertain disciplinary procedures against them no matter what they do.

        And then these ridiculous writings from professors are posted as “scholarship.” What. An. F’ing. Joke.

        These posts should be labeled “propaganda.”

        With the following warning. “We don’t know if these authors have taken money directly or indirectly to write these words. There is no fact checking done on anything they write. If they intentionally lie in their writings there is no consequence to them. These writings are not peer reviewed and there is no checking on anything the authors say or do.”

        1. 2.1.1.1

          Questionable ethics?

          In this instance?

          I thought for sure that you saw (and took this as a direct response to your past inquiries) the final paragraph on the second post:

          The authors represent that they are not being paid to take a position in this post nor do they have any conflicts of interest in the subject matter discussed in this post.

          1. 2.1.1.1.1

            I read it. But what enforcement is there behind that statement?

            The fact is there is no consequence to a law professor saying or doing pretty much anything in these writings.

          2. 2.1.1.1.2

            So is that 20 bucks 20 bucks a pop?

            1. 2.1.1.1.2.1

              Your question is not clear.

              As noted to you several times now, the ‘how much’ is tied to the ‘why.’

              Here’s a friendly reminder:
              link to patentlyo.com

              As well, here’s a reminder as to how such an enterprising system can be established:
              link to patentlyo.com

              1. 2.1.1.1.2.1.1

                Not clear? By 20 bucks we mean 20 (twenty) US dollars.

    2. 2.2

      Actually, we should probably be offended as it is just adding a layer of protection to the authors of these writings. The authors like Lemley do not even bother to respond to charges of unethical conduct.

      1. 2.2.1

        What is the appropriate forum for providing such a response?

        (Serious question)

        1. 2.2.1.1

          I’ve posted videos before of other professors trying to hold law professors accountable for their writings. The deans of the law schools ignore the complaints of unethical conduct.

          The forum should be like in science where you file a complaint against the professor with their university. The reality is that the universities are the ones paying them and giving them the title and should be responsible for their conduct.

          In Lemley’s case, Stanford law school should take ethics complaints against Lemley and evaluate them and he should have to respond.

          The fact is that this has become like state media in the USSR the way these professors just do whatever they want with no consequences.

          At least everyone should be aware that open lying is fine in a law journal as there will be no consequences.

        2. 2.2.1.2

          Probably what should happen is the tax free status of law schools should be taken away. I would strongly support that. Either they police their professors and stop providing a means for the professors to make money as propogandists pretending to do scholarship or pay taxes.

          1. 2.2.1.2.1

            I’ve heard rumors that if Trump is re-elected that the tax free status of universities may be used to force them to rein in their professors.

        3. 2.2.1.3

          So, you are cognizant of a sum total of one(1) filter? Where did you go to school, Snowflake?

          1. 2.2.1.3.1

            Try to remember context Shifty.

            Just because of one word (here, ‘filter’), not every instance of the word is pertinent here.

            What was that role of your at the patent office prior to your retirement?

            1. 2.2.1.3.1.1

              And when was the time you made any sense (even to you) Snowflake?

              1. 2.2.1.3.1.1.1

                Asked and answered.

                (and noting both your ‘snowflake’ tell/meme and what appears to be an exceptionally weak attempted false assertion)

  4. 1

    Inventors are clawing back the 7th amendment!

    1. 1.1

      . . . with much clawing yet ahead . . .

    2. 1.2

      This has nothing to do with ANY clawing BY inventors.

      Do not get caught up just because THIS particular Ends is an Ends that you may like.

      The Means here remains outside the purview of actual inventors, and in a heartbeat could change from “deny” to “accept” with ZERO control of or deference to inventors.

      1. 1.2.1

        Who pays you “20 bucks a pop?”

        1. 1.2.1.1

          Still. Waiting.

          1. 1.2.1.1.1

            Why are you waiting? This has been answered many times over.

            As well, the better question of “why” has been put to you and you have NEVER answered or engaged on that question.

            So instead of waiting for something already given to you, why don’t you instead try to engage on a point long awaiting your attention?

            1. 1.2.1.1.1.1

              We have answered your questions multiple times, 50 cents a pop.

              1. 1.2.1.1.1.1.1

                No, no you have not.

                Maybe try for a cogent post.

                It might take you some energy and concentration. I suggest that you focus in one place, rather than across a dozen of so threads as you have done of late (but alas, done to STILL no avail).

                1. Do you have one example when we did not answer your question, 50 cents a pop. Mind you, we have a written record.

                2. One? There are literally hundreds in that written record “that you have.”

                  Maybe YOU should take a moment to realize that THAT written record simply is not in your favor.

                3. You say “we understand,” but who is this “we?”

                  It is clear that the singular you do not understand. The written record — again — is just not in your favor.

                4. And there YOU go again ign0ring the context of the question put to you.

                  As noted, ANY plurality outside of you as a singular person does not fit your assertions, and in fact highlights the veracity of my posts.

                  That must gall you, eh?

                5. And there YOU go again ign0ring the context of the question put to you.

                  Still.

                  Your question on filters is related to a far older thread, and you have been suitably sma cked down there.

                  The tie here though is probably inadvertent from you — your lack of understanding of context.

                  You are a veritable train wreck.

                6. ah, ok – so you do recognize one type of pertinent filter.

                  That’s a major accomplishment for you – congrats!

      2. 1.2.2

        Those remaining who do not ignore Snowflake (aka “anon”) should not respond or “engage” with him until he reveals who pays him “20 bucks a pop.”

        1. 1.2.2.1

          Are you going to pout because I did not answer one of your comments — while you evade ANY substantive answer to the plethora of questions that I have put to you?

          Including — no doubt — these?

          Are you also going to try to ignore the context that I am merely enterprising off of YOUR obsess10n and inanity?

          Do you need a link to the summary of how my colleagues and I have set up what we are calling the Shifty Lottery?

          1. 1.2.2.1.1

            Oops – forgot a word in that title. The title should read:

            The Shifty Obsess10n Lottery

            (and for fun, let’s throw in the known emoticon of )

            1. 1.2.2.1.1.1

              Not. Even. A. Single. Dot.

              1. 1.2.2.1.1.1.1

                So, Shifty, what WAS your role in the patent office before you retired?

                You want to claim that I do not have even a single dot, and yet, YOU continue to evade my questions — and there are literally hundreds of instances – that show readily that my phrasing is quite correct.

                If you ever develop the ability to pay attention (and to do so more than merely in attempts to play ‘gotcha’), then you could understand that your own words feed my ability to make you eat those words.

                Yummy!

          2. 1.2.2.1.2

            So, not an employer but some unnamed “colleagues” pay you “20 bucks a pop.” Does that sound credible to you, Snowflake?

            1. 1.2.2.1.2.1

              Of course it sounds credible to me, as that is how it is.

              This appears to only show that your pre-retirement colleagues were not attorneys.

              What was your position in the patent office for the bulk of your career there?

              1. 1.2.2.1.2.1.1

                Where did you get this “Patent Office” and “retired” mythos, 20 bucks a pop? Your script?

                1. Yes.

                  Can you name one name of of this group of imaginary “colleagues” that pay you to post?

                2. Is this immediate answer of “yes” more than merely lip service?

                  How are you going to show that you are going to own your control?

                  No, of course I will not name names. How bizarre of you to want me to play the ‘out’ game when you yourself post under (several) pseudonyms.

                  Which reminds me, you never did help a (now gone) new poster understand why the use of pseudonyms and posting anonymously is a perfectly valid form of partaking in blogs.

                  Why was that?

                3. And to make it ‘easy’ for you Shifty to formulate your cogent and inte11ectually honest answer as to HOW you are going to show that you really are going to take ownership of YOUR control, here is a link explicating the various levels of my enterprising on YOUR choice of posting ‘styles’:

                  link to patentlyo.com

                  As always, it is your choice as to how to respond.

                4. Ah, see that you are back to projecting your lack of awareness of emoticons again.

                  Nothing at all vague — in order to make them appear, you need to type a very specific thing.

                  Maybe you should get a bette script. In the meantime, thank$.

                5. Nonsense posts are in the schedule.

                  Your choice of nonsense makes me cents.

                  Thank you for your choice.

                6. Once again, 20 bucks a pop, nobody but you knows what it is that you think you are trying to say.

                7. Once again, you play with the false assertions.

                  The links provided are there anticipating this game of yours.

                  You are being outmaneuvered at every turn.

                  Every single turn.

                  Note that this is relatively easy to do, even as you ploy the exact same tactics across multiple threads. You do know how to search-by-date right?

                8. It’s either your script or “connecting the dots.” So, do you have even one dot? Remember, we have a written record. Take your time.

                9. It is hilarious in that train wreck way of your that you think that the written record in any way supports you.

                  So what IS this obsess10n thing that you have with me all about?

                10. It’s hilarious (in that train wreck way of yours) that you want to claim “not one dot,” all the while you have refused to actually answer my questions to you.

                  Answers, of which if provided in an inte11ectually honest manner, would show that my ‘connect the dots’ has been very accurate.

                  I enjoy watching you self-destruct with your obsess10n over me.

                  It’s not only enterprising, it’s fun.

    3. 1.3

      It is kind of interesting to think of the phrase “and no fact tried by a jury, shall be otherwise re-examined in any Court of the United States, than according to the rules of the common law.”

      How does one square that with the PTO deciding claims are invalid after a jury has held they are not invalid?

      1. 1.3.1

        Hmm. Same facts? (keeping in mind the reason why courts use the double negative ‘not invalid’)…

      2. 1.3.2

        Great point Night. Had Congress even have had a hint that the PTO could ever overrule a jury — or even a judge in bench trials — can’t imagine they wouldn’t have included a prohibition of such . . .

        But then again . . .

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