Recent Federal Circuit Decision Underscores that PTAB's Discretionary Rulings at the Institution Stage Are Not Subject to Appellate Review

On August 11, 2015, the Federal Circuit issued two separate nonprecedential opinions addressing the decision of the Patent Trial and Appeal Board ("PTAB") in an inter partes review ("IPR") proceeding between Schott Gemtron Corporation ("Petitioner") and patent owner SSW Holding Company. When seeking institution of the IPR proceeding, Petitioner presented nine grounds of unpatentability. The PTAB instituted trial on two grounds but declined institution on the other grounds because they were redundant. The PTAB subsequently determined that the challenged claims were not unpatentable based on the two instituted grounds.

In the first opinion, Schott Gemtron Corp. v. SSW Holding Co. Inc., the Federal Circuit issued a Rule 36 affirmance of the PTAB's decision that the challenged claims were not unpatentable.

In the second opinion, In re: Schott Gemtron Corporation, the Federal Circuit denied Petitioner's request for a writ of mandamus, which asked the Federal Circuit to require the PTAB to address the seven grounds of unpatentability on which the PTAB declined to institute the IPR proceeding. In denying the writ of mandamus, the Federal Circuit placed heavy reliance on its earlier opinions in St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014) and In re Dominion Dealer Solutions, LLC, 749 F.3d 1379 (Fed. Cir. 2014). The court explained that "[t]hose decisions artfully illuminate that the denial of a petition cannot be reviewed under any circumstances," and found that Petitioner's "case is no different." Then, noting its recent decision in In re Cuozzo Speed Technologies, LLC, No. 2014-1301 (Fed. Cir. July 8, 2015), where the court left open the possibility that a party could seek review of an institution decision after a final written decision in some circumstances via mandamus, the court nonetheless reasoned that "we would undermine the statutory regime if we were to find mandamus unavailable when a petition is denied in its entirety, yet available when a petition is denied only in part."

The Federal Circuit also noted that "[e]ven if mandamus were available here, [Petitioner] fails to satisfy its exacting standard." Noting that a writ of mandamus demands a showing of "a clear and indisputable right to relief," the court held that Petitioner failed to meet this standard because it was "seek[ing] review of a discretionary decision." In doing so, the Federal Circuit explained that the PTAB has discretion on whether to institute an IPR proceeding, and such discretion includes instituting an IPR proceeding "on all or some of the grounds of unpatentability asserted for each claim."

The Federal Circuit's denial of the writ of mandamus underscores, and follows from, the emerging rule that the court will not interfere with the PTAB's discretionary decisions concerning institution of trials. As a practical matter, the Schott decision highlights the need for petitioners to identify and focus on their best arguments for unpatentability rather than advance a multitude of grounds.

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