Inre: Procter & Gamble Company
749 F.3d 1376
| Fed. Cir. | 2014Background
- P&G owns three tooth-whitening patents (U.S. Pat. Nos. 5,891,453; 5,894,017; 7,122,199) that were the subject of litigation and later PTO petitions.
- Clio filed a declaratory-judgment action in New Jersey asserting those patents were invalid/unenforceable/not infringed; that action was voluntarily dismissed without prejudice.
- Clio then petitioned the PTO to institute inter partes reviews (IPRs) of all three patents under 35 U.S.C. §§ 311–319.
- P&G argued the IPRs were barred by § 315(a) because Clio had earlier filed a civil action challenging the patents.
- The Patent Trial and Appeal Board (acting as the Director’s delegate) concluded the dismissed declaratory-judgment action “never existed” for § 315(a) purposes and instituted the three IPRs under § 314.
- P&G sought rehearing and then filed a petition for a writ of mandamus in the Federal Circuit asking the PTO to withdraw the institution orders; the court denied mandamus.
Issues
| Issue | Plaintiff's Argument (P&G) | Defendant's Argument (Clio/PTO) | Held |
|---|---|---|---|
| Whether P&G may obtain immediate judicial review (via mandamus) of the Director’s decision to institute IPRs | Institution decision is reviewable now; PTO misapplied § 315(a) so court should rescind institution | Institution decision is not a proper subject for immediate mandamus; Board correctly treated the dismissed suit as not barring IPRs | Denied — mandamus unavailable; no clear, indisputable right to immediate review |
| Whether a voluntarily dismissed-without-prejudice declaratory action bars institution under § 315(a) | Dismissed action should bar IPRs because petitioner previously filed a civil action | Because the action was dismissed without prejudice it did not exist for § 315(a) and did not bar IPRs | Board’s treatment upheld for purposes of mandamus denial (merits left for later review) |
| Whether § 314(d) precludes all judicial review of institution decisions in later appeals | P&G argued institution decision should be reviewable now | PTO argued § 314(d) limits immediate review and mandamus is improper | Court declined to decide whether § 314(d) bars all later review; held only that immediate mandamus is inappropriate |
| Whether hardship of undergoing IPR justifies mandamus | P&G: burden and prejudice from proceeding through IPR justify extraordinary relief | PTO: hardship/inconvenience do not justify mandamus | Hardship alone insufficient; mandamus denied |
Key Cases Cited
- Kerr v. U.S. Dist. Court for N. Dist. of Cal., 426 U.S. 394 (1976) (mandamus is an extraordinary remedy requiring stringent standards)
- Cheney v. U.S. Dist. Court for D.C., 542 U.S. 367 (2004) (establishes three prerequisites for mandamus: clear right, no adequate alternatives, discretion to grant)
- Mallard v. United States Dist. Court, 490 U.S. 296 (1989) (petitioner must lack adequate alternative means to obtain relief)
- In re Roche Molecular Sys., Inc., 516 F.3d 1003 (Fed. Cir. 2008) (hardship and inconvenience of PTO proceedings do not alone justify mandamus)