April 19, 2021

Volume XI, Number 109


April 16, 2021

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Federal Circuit Confirms the PTAB’s Authority to Deinstitute IPR Proceedings

In Sling TV, L.L.C. v. Realtime Adaptive Streaming LLC, Nos. 2020-1601, 1602 (Mar. 16, 2021), the Federal Circuit dismissed in part and denied in part a direct appeal of two IPR institution decisions and two accompanying mandamus petitions.

Sling TV filed two IPR petitions challenging two patents owned by Realtime. The PTAB initially instituted, but later deinstituted, both challenges. Sling then appealed the Board’s deinstitution decisions and filed petitions for writ of mandamus in the Federal Circuit.

The Federal Circuit dismissed Sling’s appeal and mandamus petition challenging the Board’s decisions in the first IPR. Because the Board had already determined that the patent was unpatentable, and because Realtime had dismissed its appeal of that decision, the Court held both challenges moot. 

The Court then addressed Sling’s appeal and mandamus petition challenging the Board’s decisions in the second IPR. The Court dismissed Sling’s appeal, holding that the Board has inherent authority to reconsider its institution decisions and that all institution (and thus all deinstitution) decisions are “final and nonappealable.”

The Court also denied Sling’s mandamus petition. In its denial, the Court emphasized an earlier decision, Mylan Laboratories LTD. v. Janssen Pharmaceutica, N.V., in which it held that, absent an accompanying constitutional claim, mandamus petitions challenging the Board’s decision to deny institution are unlikely to meet the strict mandamus criteria. Because Sling did not present a colorable constitutional claim, the Court denied its mandamus petition.

© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 97



About this Author


Gordon Wright focuses on patent litigation, patent prosecution, and proceedings before the U.S. Patent and Trademark Office (USPTO). He has worked with a variety of technologies in the mechanical and electrical fields, including aerospace, agricultural, home appliance, medical device, and industrial manufacturing. 

Gordon has experience in several stages of litigation and USPTO proceedings. Notably, he has assisted in developing infringement and invalidity contentions, drafting motions, and conducting discovery.


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Brooke Wilner Patent Attorney Finnegan

Brooke Wilner, a registered patent attorney, enjoys a varied trial and appellate litigation practice. She practices before U.S. district courts, state courts, the Patent Trial and Appeal Board (PTAB), the U.S. Court of Appeals for the Federal Circuit (CAFC), and the U.S. International Trade Commission (ITC).

Brooke represents both patent owners and accused infringers across a broad range of mechanical and electrical technologies, including clients in the aerospace, automotive, consumer products, software, and hardware industries. She has...

Amanda Murphy IP Lawyer Finnegan

Amanda Murphy, Ph.D., focuses her practice on strategic client counseling, portfolio management, and patent prosecution for a range of clients, including small startup companies, research foundations, and large biotechnology and pharmaceutical companies.

Amanda provides patentability opinions, prepares new patent applications, prosecutes U.S. and foreign applications, and represents appellants before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). She has experience in prosecuting inter partes ...

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