In re International Business Machines Corp.

In a non-precedential opinion, the U.S. Court of Appeals for the Federal Circuit declined to direct the U.S. Patent and Trademark Office (PTO) to create a particularized written standard for consideration of inter partes review (IPR) petitions and supporting evidence.  In re International Business Machines Corp., Case No. 15-119 (Fed. Cir., Mar. 24, 2015) (Lourie, J.).

IBM filed two IPR petitions attacking a patent owned by Intellectual Ventures. The Patent Trial and Appeal Board (PTAB or Board) declined to institute IPRs based on IBM’s petitions.  IBM filed a motion for reconsideration, faulting the Board for overlooking relevant portions of an expert declaration filed in support of the petitions.  The Board denied the motion explaining that the declaration could not be incorporated by reference into the petitions and the petitions themselves did not include enough detailed discussion of the cited portions of the declaration.

IBM then sought a writ of mandamus from the Federal Circuit directing the PTO to “issue a written, clear, binding, and definitive/particularized standard for all of the PTAB merits panels to follow for considering petitions requesting inter partes review, including all evidence submitted in support thereof.”  IBM was forced to seek a writ instead of appealing the Board’s institution decision because 35 U.S.C. § 314(d) explicitly prohibits appeals of PTAB institution decisions.

The remedy of mandamus is available only in exceptional circumstances to correct a clear abuse of discretion or usurpation of judicial power.  Further, a party seeking a writ bears the burden of proving that it has no other means of obtaining the relief desired and that the right to issuance of the writ is clear and indisputable.

IBM argued that the Federal Circuit should enforce IBM’s “procedural right to have its expert evidence considered (or not considered) according to consistently applied standards.”  But the Federal Circuit rebuffed the petition, explaining that IBM had no such “right.”  The Court also found that IBM failed to clearly demonstrate “any injury beyond a generally available grievance about the government.”  Indeed, the record reflected that the PTO was already engaged in its own rulemaking process and that, as part of that process, IBM submitted comments to the PTO advocating for the same rules it was now requesting from the Court.  Thus, according to the Court, IBM had alternative means by which to obtain the relief sought in the writ.  The Court  denied the petition.