Although judicial review of decisions during IPR typically occurs through appeal after the PTAB’s Final Written Decision, a growing number of cases are exploring other means of judicial review. Questions remain about whether those other means can provide a way to overcome the statutory limits on the appealability of IPR decisions, which we previously discussed. This post, which is the third in a series about judicial review of IPR, addresses a third trap for the unwary: the availability of alternatives to appeal.
Mandamus: Perhaps the most well-known alternative to appeal from and IPR is petitioning for a writ of mandamus. Ever since the Supreme Court’s first decision on IPRs, Cuozzo v. Lee, 136 S. Ct. 2131 (2016), left open the possibility of judicial review of constitutional and statutory rights related to institution, some have speculated that mandamus may be the best route to present those arguments. Indeed, the Supreme Court’s most recent decision on IPRs, Thryv v. Click-To-Call, 140 S. Ct. 1367 (2020), declined to foreclose the use of mandamus in “extraordinary cases.”
The Federal Circuit has, thus far, largely dashed the hopes of those who would use mandamus. For example, the court’s decision in In re Power Integrations, 899 F.3d 1316 (Fed. Cir. 2018), explained that mandamus would not be a means to “sidestep” the statutory limits on appeal. And subsequently, in Fall Line Patents v. Unified Patents, 818 F. App’x 1014 (Fed. Cir. 2020), the court reiterated the limits of mandamus even as to the statutory limits on the PTAB’s authority to institute IPR.
Administrative Procedures Act (APA): Parties have recently sought judicial review of PTAB decisions by filing district court against the PTO under the APA. The tactic got off to a rough start in Security People v. Iancu, 971 F.3d 1355 (Fed. Cir. 2020), where the patent owner filed a lawsuit in district court alleging that IPR against patents that predate IPRs is unconstitutional. The Federal Circuit reasoned, in part, that a patent owner cannot bring such a challenge in the district court because the patent owner could have brought that challenge on appeal.
The court’s reasoning in Security People may have left open the door for a district court action under the APA where appeal to the Federal Circuit is not available. A group of petitioners has recently filed such a case in Apple v. Iancu, No. 5:20-cv-06128 (N.D. Cal., filed Aug. 31. 2020). There, the petitioners assert that the PTO did not comply with the APA’s rulemaking requirements regarding the PTAB’s test for discretionarily denying institution of IPRs based on the status of co-pending infringement litigation. The case is still pending.
Collateral Orders: Judicial review of a PTAB decision need not always wait for the IPR to conclude. Rather, the Federal Circuit recognized in University of Minnesota v. LSI, 926 F.3d 1327 (Fed. Cir. 2019), that a patent owner could appeal a pre-Institution Decision denying a motion to dismiss under the Collateral Order Doctrine. A key to the Federal Circuit’s decision was that appeal after the IPR would not fully protect the appealing party’s interests. Such situations are not typical but should not be overlooked.
Although appeal after IPRs is how most parties seek judicial review, parties should not overlook alternative ways to challenge PTAB decisions. These alternatives have not been fully tested in the courts, and they may work only in narrow circumstances. Nevertheless, they provide a different way to seek judicial review of an adverse PTAB decision. Given the importance of judicial review, parties should not overlook these alternatives.