Denied Institution of Inter Partes Review?
In Mylan Labs Ltd. v. Janssen Pharmaceutica N.V., after reaffirming the general rule that decisions denying institution of inter partes review proceedings (IPRs) are not appealable, the United States Court of Appeals for the Federal Circuit for the first time explicitly acknowledged its jurisdiction over mandamus petitions challenging such decisions. The court reminded however, that mandamus relief is a “drastic and extraordinary remedy reserved for really extraordinary causes.”
In Mylan Labs Ltd. v. Janssen Pharmaceutica N.V., the United States Court of Appeals for the Federal Circuit (CAFC) for the first time officially announced that “[w]hile there is no avenue for direct appeal of decisions denying institution, … judicial review is available in extraordinary circumstances by petition for mandamus.” Although some litigants in the past have sought mandamus relief associated with decisions denying institution in IPRs (sometimes referred to as “non-institution decisions”), the CAFC has never before acknowledged having jurisdiction over such requests, which makes this particular case newsworthy.
IPRs were created as a part of the America Invents Act to allow eligible parties to challenge the validity of an issued patent in front of the United States Patent & Trademark Office’s Patent Trial and Appeal Board (PTAB). In an IPR, the patent challenger submits a petition that must meet certain requirements before the PTAB will “institute trial” in the IPR proceedings, resulting in a review of the validity of the challenged patent claims. According to 35 U.S.C. § 314(a), an IPR may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After reviewing the petition, the PTAB issues an “institution decision” announcing whether or not the PTAB will institute trial in the IPR. Institution decisions are “final and nonappealable” according to 35 U.S.C. § 314(d), meaning that a party who is not satisfied with an institution decision does not have the right to challenge that decision on appeal, at least in theory.
Recognizing the non-appealability of institution decisions, some litigants have explored mandamus relief from the CAFC as an alternative to appeals. Mandamus relief refers to a “writ of mandamus,” or a court order that can force an organization, such as the government, a subordinate court, or a corporation, to do or refrain from doing, a specific act. A writ of mandamus is considered a “drastic and extraordinary remedy reserved for really extraordinary causes.”[1] Mandamus is governed by the All Writs Act, 28 U.S.C. § 1651(a), which “empowers a federal court to issue all writs necessary or appropriate in aid of their respective jurisdictions and agreeable to the usages and principles of law.”[2]
The CAFC in Mylan noted that the Supreme Court had previously visited the question of whether mandamus relief is available in IPRs, at least indirectly, in Cuozzo Speed Technologies, LLC v. Lee.[3] According to the CAFC, in that case the Supreme Court “suggested decisions granting institution may be reviewable (to a limited extent) on direct appeal from a final written decision” and thus, mandamus relief is not available.
Non-institution decisions, however, are different, as there is no right to appeal of such decisions. The CAFC recognized that the statute is silent with respect to mandamus further supporting a conclusion that the CAFC has mandamus jurisdiction: “There is no reason, therefore, to think §314(d) also divests us of mandamus jurisdiction. In fact, when the Board denies institution, our mandamus jurisdiction is especially important.” The Court further noted that it had not, in any prior decisions, foreclosed the possibility of exercising its mandamus jurisdiction.
Mylan had simultaneously appealed and sought mandamus relief from the denial of IPR institution in view of an earlier trial date in a co-pending district court case. The CAFC clarified that § 314(d) barred an appeal of the non-institution decision at issue, further solidifying its position regarding the non-appealability of decisions denying IPR institution. Regarding the request for mandamus relief, however, the CAFC held that it does indeed have jurisdiction over Mylan’s request. With respect to its prior decisions involving mandamus relief, the CAFC explained “[e]ach time, we held the petitioner had failed to show a clear right to relief and denied mandamus rather than dismissed the petition. Though opinions are silent as to jurisdiction, to reach that question, we must have had jurisdiction.”
The CAFC further explained that:
[u]ltimately, Mylan triggered our exclusive jurisdiction by petitioning for IPR. It set the administrative machinery into motion and opened an avenue for appellate jurisdiction … And we may consider any petition for a writ of mandamus in order to protect that jurisdiction. Accordingly, we have jurisdiction to consider Mylan’s request for mandamus on the merits.
Though it might seem that Mylan v. Janssen opens the door for mandamus relief from IPR non-institution decisions, the CAFC made clear that this is not necessarily the case. “[T]he mandamus standard will be especially difficult to satisfy” and “it is difficult to imagine a mandamus petition that challenges a denial of institution and identifies a clear and indisputable right to relief.” Even in this case, the mandamus petitioner was unsuccessful. Ultimately, the CAFC denied Mylan’s mandamus petition because Mylan lacked “a clear and indisputable right to relief” and failed “to state a colorable claim for constitutional relief.”
The challenge in reaching the very high bar required for mandamus relief was made even clearer just a few days after the Mylan decision issued. Just four days later, in Sling TV, LLC, Sling Media LLC v. Realtime Adaptive Streaming LLC, the Court again dismissed an appeal of an IPR non-institution decision and denied a simultaneously filed request for mandamus. Citing Mylan, the Court explained that “we recently held that this court has jurisdiction to entertain such a petition under 28 U.S.C. § 1651. … Nonetheless, Sling has proven again that the bar set for mandamus relief is extremely high and it is likely that PTAB’s non-institution decision will continue to remain unchallenged.”
In sum, the CAFC has explicitly acknowledged its jurisdiction over mandamus requests over IPR institution decisions; however, that does not mean mandamus petitions will be easily or frequently granted.
[1] Cheney v. U.S. Dist. Court for D.C., 542 U.S. 367, 380 (2004).
[2] FTC v. Dean Foods Co., 384 U.S. 597 (1966).
[3] 136 S. Ct. 2131, 2141-42 (2016).
