04/29/14

In re Dominion Dealer Solutions: Cannot Challenge Non-Institution on Inter Partes Review by way of Writ of Mandamus

Category: Post-Grant Proceedings
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleIn re Dominion Dealer Solutions, LLC, Misc. No. 2014-109 (Fed. Cir. April 24, 2014).
IssueIn November 2013, Dominion filed the present petition for a writ of mandamus in this court under 28 U.S.C. § 1651, challenging the Director’s non-institution [of an inter partes review] decision directly in this court.
In re Dominion Dealer Solutions, LLC at *3 (text added).
Holding[Since an inter partes review challenger may not appeal non-institution decision of the PTAB,] Dominion has no “clear and indisputable” right to challenge a non- institution decision directly in this court, including by way of mandamus.
Id. at *4 (text added).
 
Procedural HistoryDominion Dealer Solutions, LLC, petitioned the Director of the United States Patent & Trademark Office to institute inter partes reviews of five patents owned by AutoAlert, Inc. The Director, through her delegee, denied the petitions. Dominion now petitions this court to issue a writ of mandamus that would vacate the non-institution decisions and order the Director to institute an inter partes review for each of the five AutoAlert patents.
In re Dominion Dealer Solutions at *2.
 
 
 
 
Legal Reasoning (Prost, O’Malley, Taranto)
Background
Legal Standard: Writ of MandamusThe remedy of mandamus is a drastic one, to be invoked only in extraordinary situations.” […] Accordingly, “three conditions must be satisfied before it may issue.” […] The petitioner must show a “‘clear and indisputable’” right to relief.[…] The petitioner must “lack adequate alternative means to obtain the relief” it seeks. […] And “even if the first two prerequisites have been met, the issuing court, in the exercise of its discretion, must be satisfied that the writ is appropriate under the circumstances.” […]
In re Dominion Dealer Solutions at *3-4 (internal citations omitted].
Legal Analysis
In another Order issued today, we dismiss an appeal by a patent challenger seeking review of the Director’s decision not to institute an inter partes review. See Order Dismissing Appeal, St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., No. 2014-1183 (Fed. Cir. Apr. 24, 2014). We explain that such a challenger may not appeal the non-institution decision to this court. We conclude that such an appeal is precluded by the statutory provisions addressing inter partes review, including section 314(d)’s broad declaration that the Director’s decision “whether to institute an inter partes review under this section shall be final and nonappealable,” and by our jurisdictional stat- ute. See St. Jude, slip op. at 5-6. Those conclusions require denial of Dominion’s petition for mandamus relief.
Id. at *4.
Conclusion
The petition is denied.
Id. at *5.
 
 
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