In re ESIP: No Arthex challenges in closed case

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This is a short nonprecedential decision in a petition for a writ of mandamus that was issued today but that isn’t on the Federal Circuit’s website.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.”

Petition denied.

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 

 

 

8 thoughts on “In re ESIP: No Arthex challenges in closed case

  1. 5

    Although this case was too late, there should soon be decisions on other pending Don Quixote challenges of the simple non-draconian PTO fix [providing for optional IPR reconsideration requests to the Director] for the simple non-draconian constitutional statutory fix of inadequate Director control of APJs made in the Arthrex Supreme Court decision. [That was the latest of the several failed attempts to get the Sup . Ct. to “throw the baby out with the bath water” contrary to normal Sup. Ct. statutory interpretation practice.]

    1. 5.1

      pending Don Quixote challenges of the simple non-draconian PTO fix

      Well isn’t that some nice spin.

      Rah rah rah

    1. 4.1

      Saw that as well – would be an excellent reminder to the likes of MaxDrie.

  2. 3

    I don’t see why the Federal Circuit doesn’t just put all dispositive orders on its website…

    As if they were listening to your complaint, the order went belatedly live on the website. That is power, what you just did there. 😉

  3. 2

    The decision was rendered by PTO personnel lacking authority to issue the order. But corporations and bureaucrats get to make up the law to suit themselves in the U.S. We aren’t making very good progress on that equal justice ideal.

    1. 2.1

      Speaking about ‘lacking authority,’ I was curious as to any further movement of a person being vetted to HAVE that proper authority….

      It being mid-October, I was also curious as to both what has been the longest wait for a new director to be put in place, as well as to any ‘explanations’ as to why this administration has taken so long in view of the record number of Executive branch fiats issued so quickly.

  4. 1

    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.

    I am left wondering what ESIP may have said (and whether or not they challenged the fact that the person NOT appointed in any way, and merely currently presuming to “do the duties of” can qualify for the apparently necessary level of authority that the Supreme Court’s Arthrex decision calls for — noting that that decision does NOT permit Mr. Hirshfeld to wield the authority that he is wielding – for this explicit type of action.

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