March 16, 2021 - Substantive Orders Update

Order of Interest – Can You Challenge The Denial Of Institution Without Showing A Deprivation Of Life, Liberty, Or Property?

Case:  Mylan Labs. Ltd. v. Janssen Pharm., N.V., No. 21-1071

Originating tribunal:  Patent Trial and Appeal Board

Date:  March 12, 2021

Panel:  Judges Newman, Moore, and Stoll, with Judge Moore writing the precedential order

Result:  Appeal dismissed, and mandamus denied

The Court dove deep into procedure in our precedential order of interest:  a notice of appeal on the denial of institution of an IPR, a notice of appeal construed as a petition for a writ of mandamus, and oral argument on a motion to dismiss an appeal—all in one.  The case started out simple enough.  Patent owner sues alleged infringer.  Alleged infringer petitions for an IPR.  IPR is denied.  In most cases, that’s where the story ends.

But here, the alleged infringer, would-be IPR petitioner got creative.  It appealed the denial of institution, cited the All Writs Act in its notice of appeal, and mentioned mandamus at argument.  So did it work; did the IPR petitioner get its denial of institution reviewed?  For those that don’t want to read to the end:  the appeal was dismissed, and mandamus was denied.

First, the procedure:  shortly after the petitioner filed its notice of appeal, the patent owner moved to dismiss (which stays appellate briefing).  And as is the case when the PTO believes an appeal is improper, the Director refused to file the certified list.  But the Director also sua sponte exercised its right to intervene, and filed a response agreeing that the appeal should be dismissed.  On the same day that the Director filed its response supporting dismissal, the IPR petitioner filed its opposition, noting that its appeal will challenge the Board’s procedures and raise a due process challenge.  Because the IPR petitioner filed later in the day it was able to respond to the Director’s arguments (sometimes it does pay to not file too early).

Then, in a bit of a rarity, the Court ordered oral argument on the motion to dismiss, and it directed the parties to address two questions at oral argument:

  1. If this court does not have jurisdiction to review this constitutional challenge in this appeal, is there any other vehicle or forum that would have jurisdiction to review a constitutional challenge to the denial of institution?
  2. Should we interpret the Notice of Appeal, which cites 28 U.S.C. § 1651, as seeking, in the alternative, a writ of mandamus?  If so, how does that affect our jurisdiction and the availability of judicial review?

In its decision, the Court didn’t pause long on whether it had jurisdiction over the IPR petitioner’s appeal.  Consistent with past precedent, the Court noted that Congress generally barred appeals from denials of institution.

The Court, however, didn’t stop there.  In a footnote at the start of its opinion, it noted that the IPR petitioner’s citation to the All Writs Act and request for mandamus at oral argument was enough for the notice of appeal to be construed as a petition for a writ of mandamus.  The Court then held it had jurisdiction to consider the petition for a writ of mandamus:  “While there is no avenue for direct appeal of decisions denying institution, we conclude that judicial review is available in extraordinary circumstances by petition for mandamus.”  The Court further noted that Congress’s appeal bar “is silent with respect to mandamus,” so the Court saw “no reason, therefore, to think [Congress’s statute] also divests us of mandamus jurisdiction.”

With jurisdiction in hand, the Court proceeded on.  But just because there’s jurisdiction, doesn’t mean mandamus is an easy hill to climb.  The Court reiterated that “mandamus is a ‘drastic and extraordinary remedy reserved only for really extraordinary causes.’”  On top of that standard, the Court noted that Congress gave the Director significant discretion whether or not to institute an IPR.  Given that discretion and the “prohibition on appeal of such decisions, [the Court] conclude[d] that there is no reviewability of the Director’s exercise of his discretion to deny institution except for colorable constitutional claims.”  Under that standard, the Court noted that “it is difficult to imagine a mandamus petition that challenges a denial of institution and identifies a clear and indisputable right to relief.”  Finally, the Court held there was no colorable due process challenge because there was no “deprivation of life, liberty, or property.”