Federal Circuit Blocks Mandamus Relief for USPTO Institution Denials

"We do not decide whether the PTO's actions are correct or whether the use of this factor is permitted under the statutes... We decide only that Cambridge has failed to show a clear and indisputable right to the relief requested given the limits on our review of the PTO's decision to deny institution."

"In In Re Highlevel, Inc., Highlevel petitioned for IPR of patents owned by Etison LLC, doing business as ClickFunnels, directed to website creation technology, but the PTAB declined to institute based on parallel district court proceedings. In those proceedings, the district court determined the patents at issue claimed ineligible subject matter, and the PTAB-under then-Acting Director Coke Morgan Stewart's new discretionary denial process -discretionarily denied the IPR petitions, explaining that "the efficiency and integrity of the patent system is best served by denying institution.""

"The CAFC denied the petition, rejecting HighLevel's constitutional due process claims as well as its non-constitutional claims, and also dismissing its argument that the USPTO should have promulgated its rules on discretionary denial considerations via notice-and-comment rulemaking. Since that challenge can be raised in an Administrative Procedure Act proceeding in district court, "there appears to be an adequate alternative avenue for relief," said the CAFC."

The CAFC issued three decisions denying mandamus relief to petitioners whose IPR institution requests were denied by the PTAB. The PTAB exercised discretionary denials in cases involving parallel district court proceedings and ineligible subject matter findings. In In Re HighLevel, the PTAB declined institution after a district court found the patents ineligible and invoked a new discretionary denial process. The CAFC rejected constitutional and other challenges and noted that an Administrative Procedure Act action in district court provides an adequate alternative for relief. The CAFC emphasized limits on its review and the absence of a clear, indisputable right to compel institution.

Read at IPWatchdog.com | Patents & Intellectual Property Law