Case: 15-119 Document: 26 Page: 1 Filed: 02/03/2015
`
`Misc. No. 15-119
`(Inter Partes Review Nos. IPR2014-00672 & IPR2014-00673)
`_____________________________________________________________
`
`
`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`__________________________________
`
`IN RE INTERNATIONAL BUSINESS MACHINES CORPORATION,
`Petitioner.
`_____________________________________________________________
`
`Petition for Writ of Mandamus
`United States Patent and Trademark Office,
`Patent Trial and Appeal Board
`_____________________________________________________________
`
`RESPONSE OF THE DIRECTOR OF THE
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`NATHAN K. KELLEY
`Solicitor
`
`SCOTT C. WEIDENFELLER
`Associate Solicitor
`
`Mail Stop 8
`P.O. Box 1450
`Alexandria, VA 22313-1450
`(571) 272-9035
`
`Attorneys for the Director of
` the United States Patent
` and Trademark Office
`
`
`
`February 3, 2015
`
`1
`
`USAA 1070
`USAA v Asghari-Kamrani
`CBM2016-00063
`CBM2016-00064
`
`

`

`Case: 15-119 Document: 26 Page: 2 Filed: 02/03/2015
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND ............................................................................................. 2
`
`III. ARGUMENT ................................................................................................... 4
`
`A. Mandamus is an extraordinary form of relief ....................................... 4
`
`B.
`
`C.
`
`D.
`
`This Court already recognized that a challenge to the Director’s
`decision not to institute an inter partes review is not subject to
`mandamus review .................................................................................. 5
`
`Even if the Director’s decision not to institute an inter partes
`review were reviewable, the type of discretionary decision
`challenged by IBM is not appropriate for mandamus review ............... 8
`
`IBM cannot sidestep the rulemaking process via mandamus ............. 12
`
`IV. CONCLUSION .............................................................................................. 17
`
`
`
`
`2
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`Case: 15-119 Document: 26 Page: 3 Filed: 02/03/2015
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Page(s)
`
`Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33 (1980) ................................ 4, 7, 10
`
`Bankers Life & Casualty Co. v. Holland, 346 U.S. 379 (1953) ................................ 5
`
`Bluewater Network & Ocean Advocates, In re, 234 F.3d 1305 (D.C. Cir. 2000) .... 4
`
`Cellnet Commc’n, Inc. v. FCC, 965 F.2d 1106 (D.C. Cir. 1992) ........................... 15
`
`Cheney v. U.S. Dist. Court for the Dist. of Columbia, 542 U.S. 367 (2004) ............ 4
`
`Dominion Dealer Solutions, LLC, In re,
`749 F.3d 1379 (Fed. Cir. 2014) ................................................... 2, 6, 7, 12, 17
`
`
`Fahey, Ex parte, 332 U.S. 258 (1947) ....................................................................... 4
`
`Heckler v. Ringer, 466 U.S. 602 (1984) .................................................... 8, 9, 12, 14
`
`ICC v. New York, N. H. & H. R. Co., 287 U.S. 178, 204 (1932) ........................... 15
`
`James B. Beam Distilling Co. v. Georgia, 501 U.S. 529 (1991) ............................. 11
`
`Lujan v. Nat’l Wildlife Fed’n, 497 U.S. 871 (1990) ............................................... 15
`
`Mallard v. U.S. Dist. Court for the S. Dist. of Iowa, 490 U.S. 296 (1989) ............... 5
`
`Norton v. S. Utah Wilderness Alliance, 542 U.S. 55 (2004) ............................. 14, 15
`
`Procter & Gamble Co., In re, 749 F.3d 1376 (Fed. Cir. 2014) .............................. 6, 7
`
`Roche Molecular Sys., Inc., In re, 516 F.3d 1003 (Fed. Cir. 2008) .......................... 4
`
`Shalala v. Guernsey Mem’l Hosp., 514 U.S. 87 (1995) .......................................... 13
`
`3
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`Cases
`
`Page(s)
`
`United States ex rel. Dunlap v. Black, 128 U.S. 40, 46 (1888) ............................... 15
`
`Your Home Visiting Nurse Servs., Inc. v. Shalala, 525 U.S. 449 (1999) ................. 9
`
`Statutes and Legislative Material
`
`5 U.S.C. § 702 .......................................................................................................... 14
`
`5 U.S.C. § 706 .......................................................................................................... 14
`
`28 U.S.C. § 1361 ........................................................................................................ 8
`
`28 U.S.C. § 1651(a) ................................................................................................. 15
`
`35 U.S.C. § 6(b)(4) ..................................................................................................... 1
`
`35 U.S.C. § 141 .......................................................................................................... 6
`
`35 U.S.C. § 311 ...................................................................................................... 1, 5
`
`35 U.S.C. § 313 .......................................................................................................... 5
`
`35 U.S.C. § 312(a)(3)(B) ........................................................................................... 9
`
`35 U.S.C. § 314 .......................................................................................... 1, 5, 6, 7, 8
`
`35 U.S.C. § 316 .................................................................................................... 1, 13
`
`35 U.S.C. § 318(a) ................................................................................................. 1, 6
`
`35 U.S.C. § 319 ...................................................................................................... 1, 6
`
`Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) .......................................................................... 5, 8, 9, 13
`
`
`157 Cong. Rec. S1377 (daily ed. Mar. 8, 2011) ........................................................ 8
`
`4
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`Case: 15-119 Document: 26 Page: 5 Filed: 02/03/2015
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`Regulations and Regulatory Material
`
`Page(s)
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`37 C.F.R. § 42.4 ..................................................................................................... 2, 5
`
`37 C.F.R. § 42.22(a)(2) .............................................................................................. 3
`
`37 C.F.R. § 42.104 ..................................................................................... 3, 9, 10, 11
`
`37 C.F.R. § 42.108 ................................................................................................. 2, 5
`
`Changes to Implement Inter Partes Review Proceedings, Post-Grant Review
`Proceedings, and Transitional Program for Covered Business Method
`Patents, 77 Fed. Reg. 48,680 (Aug. 14, 2012)............................................... 14
`
`
`Request for Comments on Trial Proceedings Under the America Invents Act
`Before the Patent Trial and Appeal Board,
`79 Fed. Reg. 36,474, 36,474 (June 27, 2014) ................................................ 12
`
`
`Rules of Practice for Trials Before the Patent Trial and Appeal Board and
`Judicial Review of Patent Trial and Appeal Board Decisions,
`77 Fed. Reg. 48,612 (Aug. 14, 2012) ............................................................ 13
`
`
`Other Authority
`
`Letter from Manny W. Schecter, Chief Patent Counsel & Marian
`Underweiser, Intellectual Property Law Counsel, to Scott R. Boalick,
`Vice Chief Administrative Patent Judge (Acting), Patent Trial and
`Appeal Board (Sept. 19, 2014) ...................................................................... 13
`
`
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`5
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`Case: 15-119 Document: 26 Page: 6 Filed: 02/03/2015
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`INTRODUCTION
`
`By statute, an inter partes review involves two distinct proceedings. The
`
`I.
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`first is conducted by the Director of the United States Patent and Trademark Office
`
`(Director), or her delegate(s), in response to a petition filed by “a person who is not
`
`the owner of a patent” requesting the “inter partes review” of a patent. 35 U.S.C.
`
`§ 311. The “determination by the Director whether to institute an inter partes
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`review” under 35 U.S.C. § 314 is both “final and nonappealable.” Id. § 314(d). It
`
`is only after the Director decides to grant a petition for inter partes review that the
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`Patent Trial and Appeal Board (Board) carries out the second step of conducting
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`the substantive review. Id. §§ 6(b)(4), 316(c). At the close of that substantive
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`review, the Board issues a final written decision that is appealable to this Court.
`
`Id. §§ 318(a), 319.
`
`In sum, the two parts of the inter partes review process are: (1) the non-
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`appealable discretionary decision by the Director whether to institute review
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`proceedings to test the patentability of a patent; and (2) the appealable decision of
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`the Board, which addresses the issue of patentability of the claims involved in the
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`review. The current case involves the Director’s discretionary decision whether or
`
`not to institute an inter partes review. This Court has already held, under
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`circumstances like those here, that there is “‘no clear and indisputable’ right to
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`Case: 15-119 Document: 26 Page: 7 Filed: 02/03/2015
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`challenge [the] non-institution” of an inter partes review at the Federal Circuit,
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`“including by way of mandamus.” In re Dominion Dealer Solutions, LLC, 749
`
`F.3d 1379 (Fed. Cir. 2014). For that reason alone, this Court should deny the
`
`petition.
`
`II. BACKGROUND
`
`Petitioner International Business Machines Corp. (IBM) filed two petitions
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`at the United States Patent and Trademark Office (USPTO) for inter partes review,
`
`seeking review of a number of claims from U.S. Patent No. 6,314,409. Pet. Br. 2.
`
`As part of each petition, IBM submitted claim charts comparing the claims at issue
`
`with the asserted prior art. See, e.g., A87-115 (IPR2014-00672); A175-94
`
`(IPR2014-00673). These charts, in turn, each cite without explanation a
`
`declaration from IBM’s expert, Mr. William Rosenblatt. See, e.g., A67 (stating
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`only: “(See Ex.1001 ¶¶ 74-77)” without any additional explanation); A181
`
`(stating: “(See Ex.1001 ¶¶ 105-107)”). The same Board panel addressed both of
`
`IBM’s petitions, and declined to institute a review in either case.1 In each case, the
`
`1
`IBM incorrectly refers to the Board panel as a “merits” panel (e.g., Pet. Br.
`2) – because the Board declined to institute a review, the Board never reached the
`merits of the patent claims. The Board is delegated the authority to make the
`decision whether to institute an inter partes review on behalf of the Director
`pursuant to 37 C.F.R. §§ 42.4 & 42.108.
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`Case: 15-119 Document: 26 Page: 8 Filed: 02/03/2015
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`Board found that the petition failed to explain sufficiently how the cited art
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`disclosed the relevant claim limitations. See, e.g., A128-29; A240-41.
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`IBM requested rehearing, arguing that the Board overlooked its expert’s
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`declarations. A140-41. IBM also argued that the Board was required to convene
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`an expanded panel and issue a “precedential opinion” articulating a standard for
`
`how to address expert declarations provided with inter partes review petitions.
`
`A142-46 (emphasis in original).
`
`The Board denied the requests, explaining that “each petition must include a
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`detailed explanation of the significance of the [submitted] evidence.” A154 (citing
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`37 C.F.R. §§ 42.22(a)(2) & 42.104(b)(4)). With respect to IBM’s expert
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`declaration, the Board noted: “The Petition does not include a detailed explanation
`
`of the significance of Mr. Rosenblatt’s declaration, as required by 37 C.F.R.
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`§ 42.22(a)(2).” A155. Finally the Board panel explained that it was beyond its
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`power to convene an expanded panel, a power which is dedicated to “the Chief
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`Judge, on behalf of the Director.” A156. This petition followed.
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`III. ARGUMENT
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`A. Mandamus is an extraordinary form of relief
`
`“The remedy of mandamus is available only in extraordinary situations to
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`correct a clear abuse of discretion or usurpation of judicial power.” In re Roche
`
`Molecular Sys., Inc., 516 F.3d 1003, 1004 (Fed. Cir. 2008); see also, e.g., Cheney
`
`v. U.S. Dist. Court for the Dist. of Columbia, 542 U.S. 367, 380 (2004) (holding
`
`that the writ of mandamus “is a ‘drastic and extraordinary remedy’ reserved ‘for
`
`really extraordinary causes’”) (quoting Ex parte Fahey, 332 U.S. 258, 259-60
`
`(1947)); In re Bluewater Network & Ocean Advocates, 234 F.3d 1305, 1315 (D.C.
`
`Cir. 2000) (“[C]onsideration of any and all mandamus actions starts from the
`
`premise that issuance of the writ is an extraordinary remedy, reserved only for the
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`most transparent violations of a clear duty to act.”). This is not such a situation.
`
`To be entitled to the “extraordinary” remedy of mandamus, a petitioner must
`
`establish that: (1) there are no alternative means of obtaining the relief desired;
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`and (2) the right to the relief is “clear and indisputable.” Allied Chem. Corp. v.
`
`Daiflon, Inc., 449 U.S. 33, 35 (1980). Even if the petitioner can meet these two
`
`requirements, the court must also “be satisfied that the writ is appropriate under the
`
`circumstances.” Cheney v. U.S. Dist. Court, 542 U.S. at 381. “[P]etitioners must
`
`show that they lack adequate alternative means to obtain the relief they seek . . .
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`Case: 15-119 Document: 26 Page: 10 Filed: 02/03/2015
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`and carry ‘the burden of showing that [their] right to issuance of the writ is clear
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`and indisputable.’” Mallard v. U.S. Dist. Court for the S. Dist. of Iowa, 490 U.S.
`
`296, 309 (1989) (quoting Bankers Life & Casualty Co. v. Holland, 346 U.S. 379,
`
`384 (1953), internal quotations omitted).
`
`B.
`
`This Court already recognized that a challenge to the Director’s
`decision not to institute an inter partes review is not subject to
`mandamus review
`
`IBM seeks to have this Court review a discretionary order in one of the
`
`many post-grant proceedings filed pursuant to the Leahy-Smith America Invents
`
`Act (AIA), Pub. L. No. 112-29, 125 Stat. 284 (2011) – an order the statute
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`expressly designates as “final and nonappealable.” 35 U.S.C. § 314(d). In order to
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`institute a proceeding, “a person who is not the owner of a patent” must file a
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`petition with the Director to “institute an inter partes review” of a patent. Id.
`
`§ 311. The patent owner may then respond to the petition, identifying “reasons
`
`why no inter partes review should be instituted based upon the failure of the
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`petition to meet any requirement” of Chapter 31. Id. § 313. Based on these
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`submissions, the Director then makes the final decision “whether to institute an
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`inter partes review.” Id. § 314(b).2 The Director is thus a gatekeeper with the
`
`2
`In practice, as part of its rulemaking authority, the Director delegated the
`authority to review and grant or deny an inter partes review petition to the Board.
`37 C.F.R. §§ 42.4 & 42.108. The delegation of this authority, however, does not
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`discretion to grant or deny inter partes review petitions. The Director’s decision is,
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`by statute, “final and nonappealable.” Id. § 314(d).
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`This Court recognized that the statutory structure enacted by Congress not
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`only precludes a direct appeal of the decision to institute an inter partes review, it
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`also prevents a dissatisfied petitioner from attacking the decision via a mandamus
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`petition to this Court. Dominion Dealer, 749 F.3d at 1381; see also In re Procter &
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`Gamble Co., 749 F.3d 1376, 1377 (Fed. Cir. 2014) (“[A] non-institution decision
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`[in an inter partes review] may not be directly reviewed by this court through the
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`extraordinary means of mandamus.”). In short: there is “no ‘clear and
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`indisputable’ right to challenge a non-institution decision directly in [this Court],
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`including by way of mandamus.” Dominion Dealer, 749 F.3d at 1381.
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`In Dominion Dealer, Dominion Dealer, like IBM, petitioned this Court “to
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`issue a writ of mandamus that would vacate the non-institution decisions and order
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`the Director to institute an inter partes review for each” petition it filed seeking
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`such review in the USPTO. Id. at 1380. Dominion Dealer, like IBM, thought that
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`the Board erred in denying the reviews it sought. But this Court held that “the
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`change the statutory framework enacted by Congress. Although the Board may
`issue an opinion explaining the decision to grant or deny the petition to institute
`inter partes review, that determination and any accompanying written decision is
`issued pursuant to Section 314, not Section 318(a), and is therefore not subject to
`appeal based on either Section 141 or Section 319.
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`Case: 15-119 Document: 26 Page: 12 Filed: 02/03/2015
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`relevant statutory provisions make clear that [it] may not hear an appeal from the
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`Director’s decision not to institute an inter partes review.” Id. Mandamus relief
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`was likewise unavailable. See id. at 1380-81; Procter & Gamble, 749 F.3d at
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`1278-79 (stating that Dominion Dealer holds that there is not “clear and
`
`indisputable right to this [C]ourt’s immediate review . . . with respect to a non-
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`institution decision” involving a petition for inter partes review). It is also
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`unavailable here, for the same reasons.
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`IBM seeks review of the Director’s decision not to institute inter partes
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`review, and asks, as relief, for the Court to “instruct the USPTO to reconsider the
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`petitions in IPR2014-00672 and IPR2014-00673.” Pet. Br. 18. Ordering the
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`Director to “reconsider” a petition for inter partes review, however, is exactly the
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`type of review precluded by the unqualified finality of 35 U.S.C. § 314(d).
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`Because IBM cannot establish a “clear and indisputable” right to relief, mandamus
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`is unavailable to correct any alleged error in the Director’s decisions not to institute
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`review. Dominion Dealer, 749 F.3d at 1381; see also Allied Chem., 449 U.S. at 35
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`(petitioner has the burden to demonstrate that the “right to issuance of the writ is
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`clear and indisputable” (quotations omitted)).
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`C.
`
`Even if the Director’s decision not to institute an inter partes review
`were reviewable, the type of discretionary decision challenged by IBM is
`not appropriate for mandamus review
`
`Even if the Director’s decisions not to institute inter partes review were
`
`reviewable in this court via mandamus petition – and they are not – IBM’s petition
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`must nevertheless be denied because it seeks review of a discretionary decision.
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`“The common-law writ of mandamus, as codified in 28 U.S.C. § 1361, is intended
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`to provide a remedy for a plaintiff only if he has exhausted all other avenues of
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`relief and only if the defendant owes him a clear nondiscretionary duty.” Heckler
`
`v. Ringer, 466 U.S. 602, 616 (1984). IBM does not point to any actual
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`nondiscretionary duty that the Board failed to carry out. As such, its mandamus
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`petition cannot prevail. Id.
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`Foremost, the decision whether to institute an inter partes review at all is left
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`to the USPTO’s discretion. See 35 U.S.C. § 314(a) (providing only when “[t]he
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`Director may not authorize an inter partes review to be instituted”) (emphasis
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`added); see also AIA, § 6(c)(2)(B), 125 Stat. at 304 (permitting the Director to
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`“impose a limit on the number of inter partes reviews that may be instituted”
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`during the first four years of inter partes review); 157 Cong. Rec. S1377 (daily ed.
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`Mar. 8, 2011) (statement of Sen. Kyl) (stating that the AIA embodies “a legislative
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`judgment that it is better that the Office turn away some petitions that otherwise
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`Case: 15-119 Document: 26 Page: 14 Filed: 02/03/2015
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`satisfy the threshold for instituting an inter partes or post-grant review than it is to
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`allow the Office to develop a backlog of instituted reviews that precludes the
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`Office from timely completing all proceedings”). Thus, the USPTO never has a
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`“clear nondiscretionary duty” to institute an inter partes review. Heckler, 466 U.S.
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`at 616.
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`Moreover, a party seeking inter partes review must identify “with
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`particularity . . . the grounds on which the challenge to each claim is based.” 35
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`U.S.C. § 312(a)(3)(B). Consistent with the statute, and as part of its rulemaking
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`capacity pursuant to the AIA, the USPTO promulgated 37 C.F.R. § 42.104, which
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`requires that a “petition must specify where each element of the claim is found in
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`the prior art” and identify “specific portions of the evidence that support the
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`challenge.” 37 C.F.R. § 42.104(b). If a petitioner fails to identify the evidence
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`supporting its challenge properly, the rule gives the Board the discretion to fashion
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`an appropriate remedy: “The Board may exclude or give no weight to the evidence
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`where a party has failed to state its relevance or to identify specific portions of the
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`evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5) (emphasis added).
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`This is exactly the type of discretionary language that forecloses mandamus relief.
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`Cf. Your Home Visiting Nurse Servs., Inc. v. Shalala, 525 U.S. 449, 456-57 (1999)
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`(holding that a petitioner was not entitled to mandamus relief because a regulation
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`indicating that a determination “may be reopened” does not give rise to a “clear
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`nondiscretionary duty”).3
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`Much of IBM’s petition is dedicated to pointing out what it believes are
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`discrepancies in the Board’s treatment of evidence in different petitions. Of course
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`each petition presents its own unique set of facts, and IBM’s superficial treatment
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`of the various cases fails to account for the Board’s decision in each case.
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`Regardless, even assuming arguendo that the Board considered evidence in some
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`petitions and refused to consider similarly cited and similarly situated evidence in
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`other petitions, this discretionary action is expressly contemplated by the Board’s
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`rule, which allows (but does not require) the Board to exclude evidence where the
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`party “has failed to state its relevance.” See 37 C.F.R. § 42.104(b)(5) (“The Board
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`may exclude or give no weight to the evidence . . . .”). The allegedly inconsistent
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`results cited by IBM simply reflect the Board’s exercise of discretion consistent
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`with 37 C.F.R. § 42.104(b)(5). Because the Board has discretion to accept or
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`exclude improperly presented evidence, IBM has no “clear and indisputable” right
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`to relief. Without a “clear and indisputable” right to relief, IBM’s petition must be
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`denied. Allied Chem., 449 U.S. at 35.
`
`3
`Even IBM acknowledges that the Board’s decision in this case is
`discretionary. In its “Issue Presented” section, it asks whether the Board “has
`abused its discretion by failing to ensure that all PTAB merits panels apply one
`consistent standard.” Pet. Br. 2 (emphasis added).
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`The single case underlying all of IBM’s arguments, James B. Beam
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`Distilling Co. v. Georgia, 501 U.S. 529 (1991) (Beam Distilling), is not to the
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`contrary. IBM claims that Beam Distilling creates a “clear and indisputable” right
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`that the Board treat similarly situated petitioners in the same way. Beam Distilling
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`creates no such right. The issue in Beam Distilling was “whether it is error to
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`refuse to apply a rule of federal law retroactively after the case announcing the rule
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`has already done so.” Id. at 540. That rule is not at issue in this case, and the
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`Beam Distilling decision itself explains that it is “narrow,” and “confined entirely
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`to an issue of choice of law.” Id. at 544.
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`To the extent Beam Distilling has any relevance to this case it simply stands
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`for the proposition that the Board must apply the same rules to all petitioners.
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`There is no dispute that the Board applied 37 C.F.R. § 42.104(b)(5) to IBM in this
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`case, and to the other petitioners in the other cited cases. It is the explicitly
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`discretionary nature of the rule that allows for different outcomes even for what
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`IBM claims are “similarly situated” petitioners. Cf. Beam Distilling, 501 U.S. at
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`543-44 (“[N]othing we say here precludes consideration of individual equities
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`when deciding remedial issues in particular cases.”).
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`Case: 15-119 Document: 26 Page: 17 Filed: 02/03/2015
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`Mandamus is “available to ‘a plaintiff only if the defendant owes him a clear
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`nondiscretionary duty.’” Heckler, 466 U.S. at 616. IBM has not identified any
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`such nondiscretionary duty. Its petition must therefore be dismissed.
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`D.
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`IBM cannot sidestep the rulemaking process via mandamus
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`Even if this Court had not already foreclosed mandamus review of the
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`decision to deny inter partes review (and it did just that in Dominion Dealer) and
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`even if the Board’s decision were not explicitly discretionary (and it is), IBM’s
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`mandamus petition would still fail because the relief IBM seeks is simply not
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`compatible with a mandamus petition. IBM asks this Court to instruct “the
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`USPTO to issue a a [sic] written, clear, binding, and definitive/particularized
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`standard for all of the PTAB merits panels to follow for considering petitions
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`requesting inter partes review, including all evidence submitted in support
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`thereof.” Pet. Br. 18. In essence, IBM seeks to force the agency to engage in
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`rulemaking without any corresponding statutory requirement to do so.
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`To be clear, the USPTO is already engaged in the rulemaking process, and
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`sought “public comment on all aspects of the new administrative trial proceedings,
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`including the administrative trial proceeding rules and trial practice guide.”
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`Request for Comments on Trial Proceedings Under the America Invents Act
`
`Before the Patent Trial and Appeal Board, 79 Fed. Reg. 36,474, 36,474 (June 27,
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`17
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`Case: 15-119 Document: 26 Page: 18 Filed: 02/03/2015
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`2014). In response, IBM suggested the USPTO make a rule addressing citations to
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`an expert declaration in a petition for inter partes review. See Letter from Manny
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`W. Schecter, Chief Patent Counsel & Marian Underweiser, Intellectual Property
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`Law Counsel, to Scott R. Boalick, Vice Chief Administrative Patent Judge
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`(Acting), Patent Trial and Appeal Board 6 (Sept. 19, 2014), available at
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`http://www.uspto.gov/ip/boards/bpai/ibm_comments_20140919.pdf. This is
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`exactly the relief IBM asks the Court to provide in this petition. The USPTO has
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`not yet made a decision on IBM’s suggestion, and IBM cannot short circuit the
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`rulemaking process via mandamus petition.
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`Indeed, IBM identifies no statutory duty requiring the USPTO to issue a rule
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`governing citations to expert declarations. While Congress allocated the Director
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`the responsibility of “prescrib[ing] regulations” regarding the new AIA
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`proceedings, 35 U.S.C. § 316, that does not translate into a duty “to promulgate
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`regulations that, either by default rule or by specification, address every
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`conceivable question.” Shalala v. Guernsey Mem’l Hosp., 514 U.S. 87, 96 (1995).
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`The USPTO discharged its statutory duty under Guernsey Memorial Hospital when
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`it issued an extensive set of rules governing trials before the Board. See generally
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`Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial
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`Review of Patent Trial and Appeal Board Decisions, 77 Fed. Reg. 48,612-78 (Aug.
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`Case: 15-119 Document: 26 Page: 19 Filed: 02/03/2015
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`14, 2012); Changes to Implement Inter Partes Review Proceedings, Post-Grant
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`Review Proceedings, and Transitional Program for Covered Business Method
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`Patents, 77 Fed. Reg. 48,680-732 (Aug. 14, 2012). There is no duty that requires
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`the USPTO to issue the specific rule IBM requests; the decision of the USPTO to
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`issue (or not issue) such a rule is clearly discretionary and thus outside the scope of
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`mandamus review. Heckler, 466 U.S. at 616.
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`Finally, in addition to all of the reasons why mandamus must be denied, the
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`USPTO notes that IBM’s requested relief – that the Director undertake a specific
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`action and make a specific rule – is extraordinary. It is telling that IBM fails to cite
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`even a single case where a Court ordered such a remedy. Even the Administrative
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`Procedure Act (APA), a statute which allows judicial review for a person
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`“adversely affected or aggrieved by agency action,” 5 U.S.C. § 702, and the typical
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`vehicle for review of administrative decisions, does not allow a court to compel an
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`agency to issue a specific rule.
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`Instead, under the APA, the reviewing court may only “compel agency
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`action unlawfully withheld or unreasonably delayed.” 5 U.S.C. § 706. As such,
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`“the only agency action that can be compelled under the APA is action legally
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`required.” Norton v. S. Utah Wilderness Alliance, 542 U.S. 55, 63 (2004)
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`(SUWA) (emphasis in original); see also id. at 65 (“The limitation to required
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`Case: 15-119 Document: 26 Page: 20 Filed: 02/03/2015
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`agency action rules out judicial direction of even discrete agency action that is not
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`demanded by law (which includes, of course, agency regulations that have the
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`force of law).”). Indeed, the D.C. Circuit has held that “an agency’s refusal to
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`initiate a rulemaking is evaluated with deference so broad as to make the process
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`akin to non-reviewability.” Cellnet Commc’n, Inc. v. FCC, 965 F.2d 1106, 1111
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`(D.C. Cir. 1992).
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`This limitation of the APA is consistent with the traditional limitations on
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`mandamus:
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`In this regard the APA carried forward the traditional practice prior to
`its passage, when judicial review was achieved through use of the so-
`called prerogative writs — principally writs of mandamus under the
`All Writs Act, now codified at 28 U.S.C. § 1651(a). The mandamus
`remedy was normally limited to enforcement of “a specific,
`unequivocal command,” ICC v. New York, N. H. & H. R. Co., 287
`U.S. 178, 204 (1932), the ordering of a “‘precise, definite act . . .
`about which [an official] had no discretion whatever,’” United States
`ex rel. Dunlap v. Black, 128 U.S. 40, 46 (1888) . . . .
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`SUWA, 542 U.S. at 63. Contrary to IBM’s requested relief, there is no “specific,
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`unequivocal command,” id., that the Director issue a “clear, binding, and
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`definitive/particularized standard for all of the PTAB merits panels to follow for
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`considering petitions requesting inter partes review, including all evidence
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`submitted in support thereof.” Pet. Br. 18; see Lujan v. Nat’l Wildlife Fed’n, 497
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`U.S. 871, 891 (1990) (holding that a party “cannot seek wholesale improvement of
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`Case: 15-119 Document: 26 Page: 21 Filed: 02/03/2015
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`[an agency’s] program by court decree, rather than in the offices of the [agency] or
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`the halls of Congress, where programmatic improvements are normally made”)
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`(emphasis in original). The remedy IBM seeks is simply not available to it.
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`Case: 15-119 Document: 26 Page: 22 Filed: 02/03/2015
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`IV. CONCLUSION
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`
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`Mandamus relief is not available to review the Director’s decision not to
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`institute an inter partes review under this Court’s decision in In re Dominion
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`Dealer Solutions, LLC, 749 F.3d 1379 (Fed. Cir. 2014). Even if Dominion Dealer
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`did not settle the issue, the decision challenged by IBM is completely
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`discretionary, and therefore outside of the scope of mandamus review. And even if
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`the Board’s decision were not discretionary, the relief requested by IBM
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`improperly impinges on the USPTO’s rulemaking process and is not available by
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`mandamus petition in any case. This Court therefore should deny IBM’s
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`mandamus petition.
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`February 3, 2015
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`Respectfully submitted,
`
`/s/ Scott C. Weidenfeller
`NATHAN K. KELLEY
`Solicitor
`
`SCOTT C. WEIDENFELLER
`Associate Solicitor
`
`Mail Stop 8
`P.O. Box 1450
`Alexandria, VA 22313-1450
`(571) 272-9035
`
`Attorneys for the Director of
` the United States Patent and
` Trademark Office
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`22
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`Case: 15-119 Document: 26 Page: 23 Filed: 02/03/2015
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`CERTIFICATE OF SERVICE
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`I certify that on February 3, 2015, I electronically filed the foregoing
`
`RES