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Volume XII, Number 143


May 20, 2022

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Federal Circuit Denies Mandamus Petition, Confirming Non-Appealability of Institution Decisions Despite Parties’ Agreement to First Arbitrate Patent Validity

In In re: MaxPower Semiconductor, Inc., No. 2021-146 (Fed. Cir. Sept. 8, 2021), the Federal Circuit denied MaxPower’s petition for mandamus seeking review of four PTAB decisions to institute IPR proceedings despite an agreement to first arbitrate patent validity.

MaxPower petitioned for mandamus review of the PTAB’s decisions to institute four IPR proceedings, arguing its agreement to arbitrate patent validity foreclosed PTAB review. A panel majority denied MaxPower’s petition. It first reasoned MaxPower had not established jurisdiction under the collateral order doctrine: “If MaxPower is truly not raising matters that are absolutely barred from appellate review under [35 U.S.C. §] 314(d) . . . , then MaxPower can meaningfully raise its arbitration-related challenged after the [PTAB]’s final written decisions.” The majority then rejected MaxPower’s argument that its appeals were authorized under 9 U.S.C. § 16(a)(1), which provides for appeals from certain arbitration-related orders. The Court found the PTAB’s decisions did not fall within any of the express statutory categories. Finally, the majority found MaxPower failed to show its mandamus petition was more than a means to avoid the statutory prohibition on appellate review of agency institution decisions. It noted MaxPower failed to show the PTAB clearly exceeded its authority because (i) the PTAB is not bound by a private contract between parties; and (ii) MaxPower failed to show how 35 U.S.C. § 294 deprives the PTAB of the authority to institute a review “when the statute does not by its terms task the agency with enforcing private arbitration agreements.”

Judge O’Malley dissented-in-part, finding the majority’s denial of a writ of mandamus in this case allows the PTAB to “add a new caveat to Congress’s clear instruction that agreements to arbitrate patent validity shall be ‘valid, irrevocable, and enforceable’—i.e., except during inter partes review.” In her view, 35 U.S.C. § 294 prevents PTAB review, at least until an arbitrator has determined the issue is not one for arbitration. And MaxPower has no other adequate method of obtaining relief because interlocutory appeals from institution decisions are barred under 35 U.S.C. § 314, and mandamus relief is “the only way to prevent the reviews from proceeding.”

© 2022 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 265

About this Author

Y. Leon Lin Atlanta Patent Litigation Attorney Finnegan Henderson Farabow Garrett & Dunner LLP

Leon Lin’s practice includes patent licensing, litigation, patent prosecution, and post-grant proceedings before the U.S. Patent and Trademark Office (USPTO). He has experience in the fields of organic and inorganic chemistry, specifically in solar energy and artificial photosynthesis.

While pursuing his undergraduate degrees, Leon worked in various labs that focused on carbon capture and solar-powered water-splitting to produce hydrogen fuel. As the head research assistant, Leon managed projects that involved proton NMR, carbon NMR, and GCMS analyses of potential catalyst reagents...

Sydney R. Kestle Patent Attorney Finnegan, Henderson, Farabow, Garrett & Dunner Washington, DC

Sydney Kestle focuses on several areas of patent law, including pre-litigation due diligence, client counseling, litigation in U.S. district courts, and proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). Her patent practice covers several technology sectors in the mechanical and electrical arts, including industrial manufacturing, medical devices, and wireless communications and related consumer products. 

Sydney has an undergraduate degree in bioengineering, with a focus in biomechanics tissue engineering and material...

Elizabeth Ferrill Patent Attorney Finnegan Law Firm

Elizabeth Ferrill is an “undisputed expert on design patents” who is “always updated and enlightening others with her deep knowledge,” “very involved in the design bar,” and “gives her clients an outstanding service” as noted in Intellectual Asset Management Patent 1000. She focuses her practice on all aspects of design patents, including prosecution, counseling, post-grant, and litigation.

Elizabeth counsels clients who hold design patents as well as those accused of infringement. She has experience with design patents related to consumer and industrial products, medical...

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