The US Court of Appeals for the Federal Circuit in In re: Power Integrations, Inc. holds that mandamus actions are not available to allow a “disappointed petitioner [to] by-pass the statutory bar on appellate review simply by directing its challenge to asserted procedural irregularities rather than to the substance of the non-institution ruling.”
In the recent case of In re: Power Integrations, Inc., a rebuffed petitioner, Power Integrations, Inc. (Power), asked the Federal Circuit to review a decision by the Patent Trial and Appeal Board (PTAB or Board) denying institution of Inter Partes Review (IPR) proceedings. The U.S. Supreme Court, however, in Cuozzo Speed Technologies, LLC v. Lee (Cuozzo) already foreclosed appellate review of run-of-the-mill PTAB institution decisions. Attempting to circumvent Cuozzo’s mandates, Power argued that a writ of mandamus should issue, because the Board had violated procedural rights guaranteed by the Administrative Procedure Act (APA). Essentially, Power argued that the Board “did not provide an adequate explanation for its non-institution decisions.”
The Federal Circuit cited the Board’s “four decisions, each from 15 to 20 pages long, supplemented by four substantive decisions on rehearing” and found “no merit” to Power’s arguments. The Federal Circuit also emphasized that “[a] disappointed petitioner cannot by-pass the statutory bar on appellate review simply by directing its challenge to asserted procedural irregularities rather than to the substance of the non-institution ruling.”
While handily dismissing Power’s arguments, the Federal Circuit left disappointed petitioners with a glimmer of hope in obtaining appellate review of PTAB institution decisions: “This is not to say that mandamus will never lie in response to action by the agency relating to the noninstitution of inter partes review. The circumstances described by the Supreme Court in Cuozzo as illustrations of issues for which an appeal might be justified (e.g., constitutional issues, issues involving questions outside the scope of section 314(d), and actions by the agency beyond its statutory limits) would be potential candidates for mandamus review as well.”
The underlying factual background of this case involved the PTAB’s finding that Power had not met its burden to show that its asserted non-patent literature references qualified as printed publications under 35 USC §§ 102 and 311(b). These deficiencies were pointed out to the Board in each of the patent owner’s preliminary responses.
This factual background serves as a reminder to patent owners of the value in taking the time to very carefully evaluate the petitioner’s evidence and point out all holes at the preliminary response stage. These are powerful arguments, allowing patent owners to secure institution denials that will not face appellate review.
If a petition includes a first ground that is subject to an authentication challenge and a second ground that is not susceptible to such a challenge, patent owners might weigh the benefits of statutorily disclaiming enough claims to render the second ground moot. This strategy could allow patent owners to get rid of a petition pre-institution, thus allowing their case to return to district court.
One drawback to raising these authentication issues at the pre-institution stage is that petitioners are not subject to the estoppel effects of §§ 315(e) and 325(e). As such, in certain instances, patent owners might occasionally consider waiving their preliminary responses if the petitioner has not properly authenticated a reference. The Board may sua sponte identify the authentication issue, but, if they do not, and the case proceeds to a final written decision, then the estoppel will apply (instead of possibly allowing the petitioner to fix the authentication issues before re-litigating the issue in district court or in a follow-on petition).
Given the factual background discussed above, petitioners will be well-served to remember that the petition is the one and only place to make your invalidity case, and to support that case with strong evidence. When relying on non-patent literature documents, take care to ensure that you provide sufficient evidence to establish that a reference qualifies as a printed publication.
For publications available through a library, consider declarations from librarians explaining intake procedures and how long after intake the publications would have been available to members of the public. Consider also pointing out corroborating evidence that provides other indicia of public availability, such as checkout cards, library stamps, any mentions of republishing rights, etc.. For publications that were distributed at meetings or conferences, consider submitting declarations to establish all of the relevant public-dissemination factors. These factors were recently examined and summarized by the Federal Circuit in its Medtronic, Inc. v. Barry decision: “. . .  the size and nature of the meetings and whether they are open to people interested in the subject matter of the material disclosed . . .  whether there is an expectation of confidentiality between the distributor and the recipients of the materials . . . “
Submitting sufficient evidence to at least secure institution is key for petitioners, as the Federal Circuit can review and reverse Board findings regarding printed publications after a final written decision has issued.
Petitioners may also consider asking the Board for permission to submit a reply brief to the patent owner’s preliminary response, especially if there are any misstatements or new developments regarding the relevant legal standards used to establish what qualifies as a printed publication.
If you have any questions or would like more information on the issues discussed in this LawFlash, please contact the authors, Dion M. Bregman and Alexander B. Stein, resident in our Silicon Valley office, or contact any of the following lawyers from Morgan Lewis’s post-grant proceedings team:
Joshua M. Dalton
Andrew V. Devkar
Louis W. Beardell, Jr.
Brent A. Hawkins
Robert W. Busby
 Id. at 6-7.
 Id. at 7.
 Id. at 9-10.
 Id. at 10 (citing Cuozzo and also identifying “‘shenanigans’ on the part of the Board” as potentially “justify[ing] appellate review or review by mandamus”) (internal citations omitted)
 Id. at 2-4.
 See Power Integrations, Inc. v. Semiconductor Components Industries, LLC, Case No. IPR2017-01903, Paper 6 (arguing, as sole argument in preliminary response, that petitioner did not meet its burden to show that a reference qualified as a printed publication); Power Integrations, Inc. v. Semiconductor Components Industries, LLC, Case No. IPR2017-01904, Paper 6 (same); Power Integrations, Inc. v. Semiconductor Components Industries, LLC, Case No. IPR2017-01944, Paper 6 (same); and Power Integrations, Inc. v. Semiconductor Components Industries, LLC, Case No. IPR2017-01975, Paper 6 (same).
 Even if the petitioner tries to fix evidentiary problems in a follow-on petition, patent owners will have arguments for denial under 35 USC § 325(d). See Gen. Plastics Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16-17 (PTAB Sept. 6, 2017) (precedential).
 There are arguments under § 325(d) that follow-on petitions attempting to fix evidentiary issues (which could have been addressed in the initial petition) should be denied. Supra fn. 8.
 See, e.g., Palo Alto Networks, Inc. and Symantec Corp. v. Finjan, Inc., Case No. IPR2015-01979, Paper 62 at 20-29 (PTAB March 15, 2017) (crediting testimony from a librarian in finding that a reference qualified as a printed publication).
 See, e.g., id.at 24-26 (identifying a dated stamp of the cover page of a reference, a copyright page providing for “limited rights to copy and ‘republish’, and statements “indicating that copies of the periodical were available from [a publisher] without restriction,” among others, as providing “indicia of circulation to the public” and “indicia of publication”).
 Medtronic, Inc. v. Barry, Case Nos. 2017-1169 and 2017-1170 (Fed. Cir. 2018) (vacating Board findings on whether certain references qualified as printed publications and remanding for consideration of all relevant public-dissemination factors), available here.
 See GoPro, Inc. v. Contour IP Holding LLC, Case Nos. 2017-1894 and 2017-1936 (Fed. Cir. 2018) (reversing Board finding that a reference distributed at a trade show did not qualify as a printed publication), available here.
 See generally Roquette Freres, S.A., v. Tate & Lyle Ingredients Americas LLC, Case Nos. IPR2017-01506 and IPR2017-01507, Paper 11 (PTAB October 4, 2017) (granting petitioner’s request to reply to patent owner’s preliminary response to address a Board decision that had been partially reversed one day before the petition was filed).