By Jason Rantanen
In re ESIP (Panel: O’Malley, Reyna, Chen) (link to decision: In re ESIP SERIES 2)
This is a short nonprecedential decision in a petition for a writ of mandamus that was issued today but that isn’t on the Federal Circuit’s website. (I don’t see why the Federal Circuit doesn’t just put all dispositive orders on its website; it already puts Rule 36’s and many orders in petitions for writs of mandamus on the site.) The petitioner, ESIP, was the patent owner of a patent that was the subject of an inter partes review proceeding at the PTO. The PTO initiated review over ESIP’s objection, and subsequently concluded that the claims were obvious. ESIP appealed. The Federal Circuit affirmed the obviousness determination and held that it was barred from reviewing the institution decision because that decision is nonreviewable under 35 U.S.C. 314(d). The Supreme Court subsequently denied cert and the PTO issued a certificate of cancellation.
After the Supreme Court issued its Arthrex decision, ESIP filed a petition for Director review in the IPR proceeding in light of Arthrex. The PTO sent an email saying that the petition was untimely. ESIP petitioned the FEderal Circuit for a writ of mandamus.
The Federal Circuit denied the petition, ruling that (1) under the circumstances ESIP cannot directly appeal from the PTO’s email, and (2) mandamus is inappropriate here. “ESIP could have raised an Appointments Clause challenge and sought rehearing in its prior appeal. Moreover, ESIP has not pointed to any clear and indisputable authority that the PTO violated in refusing to reopen and rehear this particular matter, which is subject to a final judgment and cancellation certificate.”
Update: The Order is now available on the court’s website: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/21-164.ORDER.10-14-2021_1848936.pdf