St. Jude Med., Cardiology Div., Inc. v. Volcano Corp.; In re Dominion Dealer Solutions, LLC; In re The Procter & Gamble Co.

In three opinions, each addressing a slightly different issue regarding the reviewability of the U.S. Patent and Trademark Office (USPTO) director’s decision on whether or not to institute an inter partes review (IPR), the U.S. Court of Appeals for the Federal Circuit consistently denied requests to review the director’s decision, finding that the Court lacked jurisdiction to hear an appeal from the institution decision and that parties lack a “clear and indisputable right” to challenge it. St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., Case No. 14-1183 (Fed. Cir., Apr. 24, 2014) (Taranto, J.); In re Dominion Dealer Solutions, LLC, Misc. Docket No. 109 (Fed. Cir., Apr. 24, 2014) (Taranto, J.); In re The Procter & Gamble Co., Misc. Docket No. 121 (Fed. Cir., Apr. 24, 2014) (Taranto, J.).

In St. Jude Medical, St. Jude appealed to the Federal Circuit from the USPTO director’s denial of a petition to institute an IPR. The patentee and the Director moved to dismiss the appeal. In analyzing its jurisdiction to hear the appeal, the Federal Circuit explained that an inter partes review consists of two distinct steps: first, the decision on whether to institute the proceeding, which is governed by 35 U.S.C. § 314; and second, the conduct of the proceeding and resultant decision on the merits, which are governed by §§ 316 and 318.

The Federal Circuit explained that the director’s decision at the first step is nonappealable. In reaching its decision, the Court quoted the statute: “The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”

In Dominion, Dominion’s petition for an IPR, like St. Jude’s, was denied by the director. Dominion petitioned the Federal Circuit to issue a writ of mandamus to order the director to institute an IPR. In denying Dominion’s petition, the Federal Circuit found that Dominion lacked a “clear and indisputable” right to challenge the director’s decision, a prerequisite for mandamus relief. Without deciding the issue, the Federal Circuit noted that Dominion had also challenged the director’s decision in district court and the district court had found that § 314(d) precluded judicial review of the Director’s decision.

Finally, in Procter & Gamble, the Federal Circuit held that the director’s decision to grant a petition for an IPR is similarly ineligible for mandamus relief. Procter & Gamble, like Dominion, had petitioned the Federal Circuit for a writ of mandamus to reverse the director’s decision on institution. The Federal Circuit first noted that, under § 314(d), it lacked jurisdiction to hear an appeal from the director’s decision on institution. Then, as in Dominion, the Federal Circuit found that Procter & Gamble lacked a clear and indisputable right to challenge the Director’s decision, and was thus not entitled to mandamus relief.