Inre: Board of Trustees Univ Il

Case: 14-122 Document: 19 Page: 1 Filed: 05/05/2014

NOTE: This order is nonprecedential.

United States Court of Appeals
for the Federal Circuit
______________________

IN RE THE BOARD OF TRUSTEES OF THE
UNIVERSITY OF ILLINOIS,
Petitioner.

______________________

2014-122
______________________

On Petition for Writ of Mandamus to the United
States Patent and Trademark Office in Nos. IPR2013-401
and IPR2013-404.
______________________

ON PETITION
______________________

Before LOURIE, DYK, and REYNA, Circuit Judges.
LOURIE, Circuit Judge.
ORDER
The Board of Trustees for the University of Illinois
(“University”) petitions for a writ of mandamus directing
the United States Patent and Trademark Office (“PTO”)
and its Patent Trial and Appeal Board (“Board”) to with-
draw its orders instituting inter partes review in cases
IPR2013-401 and IPR2013-404. Cyanotech Corp. and the
PTO respond. The University replies.
Case: 14-122 Document: 19 Page: 2 Filed: 05/05/2014

2 IN RE BOARD OF TRUSTEES UNIV IL

In its petition, the University argues that the institu-
tion for inter partes review is barred under 35 U.S.C.
§ 315(a)(1), which provides such review “may not be
instituted if, before the date on which the petition for such
a review is filed, the petitioner or real party in interest
filed a civil action challenging the validity of a claim of
the patent.” In rejecting that argument, the Board, acting
as the Director’s delegee, found that the declaratory
judgment action in question did not act as a bar under
§ 315(a)(1) because it had been dismissed without preju-
dice.
“The remedy of mandamus is a drastic one, to be in-
voked only in extraordinary situations.” Kerr v. U.S. Dist.
Court, 426 U.S. 394, 402 (1976). Accordingly, “three
conditions must be satisfied before it may issue.” Cheney
v. U.S. Dist. Court, 542 U.S. 367, 380 (2004). The peti-
tioner must show a “‘clear and indisputable’” right to
relief. Id. at 381 (quoting Kerr, 426 U.S. at 403). The
petitioner must “lack adequate alternative means to
obtain the relief” it seeks. Mallard v. U.S. Dist. Court,
490 U.S. 296, 309 (1989); Cheney, 542 U.S. at 380; Kerr,
426 U.S. at 403. And “even if the first two prerequisites
have been met, the issuing court, in the exercise of its
discretion, must be satisfied that the writ is appropriate
under the circumstances.” Cheney, 542 U.S. at 381.
Our analysis in In re The Proctor & Gamble Company,
__ F. 3d __, No. 2014-121 (Fed. Cir. Apr. 24, 2014) controls
this case. In that case, as here, the Director, through her
delegee, instituted inter partes review, rejecting the
patent holder’s argument that a prior declaratory judg-
ment action barred review even though the action had
been dismissed without prejudice. We explained that
because the applicable statutory scheme precludes the
court from hearing an appeal from the Director’s decision
to institute an inter partes review, a party seeking issu-
ance of the writ to vacate institution of such proceedings
cannot establish a clear and indisputable right to relief.
Case: 14-122 Document: 19 Page: 3 Filed: 05/05/2014

IN RE BOARD OF TRUSTEES UNIV IL 3

Accordingly,
IT IS ORDERED THAT:
The petition is denied.
FOR THE COURT

/s/ Daniel E. O’Toole
Daniel E. O’Toole
Clerk of Court

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