In Re Dominion Dealer Solutions, LLC.
749 F.3d 1379
| Fed. Cir. | 2014Background
- Dominion petitioned the Director of the USPTO to institute inter partes reviews of five AutoAlert patents; the Director, via the Board, denied the petitions.
- Dominion sought a writ of mandamus in this court to vacate the non‑institution decisions and compel institute of IPRs for all five patents.
- The California district court stayed AutoAlert v. Dominion under 35 U.S.C. § 315(a)(2) after petitions were filed.
- Dominion challenged the Board’s denial in district court in Virginia under the APA, DJA, and mandamus, and separately petitioned this court under 28 U.S.C. § 1651.
- This court held that it may not hear an appeal or mandamus challenge to a Director’s non‑institution decision under the IPR statutory framework, and denied Dominion’s petition.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether mandamus review of the Director’s non‑institution decision is available. | Dominion argues it has a clear right to relief and no adequate alternative. | Statutory provisions make the Director’s non‑institution decision final and nonappealable. | Denied: mandamus relief not available. |
Key Cases Cited
- Kerr v. U.S. Dist. Court for N. Dist. of Cal., 426 U.S. 394 (1976) (drastic remedy; three prerequisites for mandamus)
- Mallard v. United States District Court, 490 U.S. 296 (1989) (mandamus prerequisites; lack of adequate alternatives)
- Cheney v. U.S. Dist. Court for D.C., 542 U.S. 367 (2004) (mandamus standards; discretion of court)