Case: 21-164 Document: 20 Page: 1 Filed: 10/14/2021
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: ESIP SERIES 2, LLC,
Petitioner
______________________
2021-164
______________________
On Petition for Writ of Mandamus to the United States
Patent and Trademark Office in No. IPR2017-02197.
______________________
ON PETITION
______________________
Before O’MALLEY, REYNA, and CHEN, Circuit Judges.
REYNA, Circuit Judge.
ORDER
ESIP Series 2, LLC petitions this court for a writ of
mandamus arising out of the United States Patent and
Trademark Office (PTO)’s refusal to take up ESIP’s request
for Director review in a closed matter. The PTO and Pu-
zhen Life USA, LLC oppose. ESIP replies.
Puzhen petitioned for inter partes review (IPR) of
claims 1, 3, and 17 of ESIP’s
U.S. Patent No. 9,415,130 (the
’130 patent). The Patent Trial and Appeal Board, acting on
behalf of the Director, instituted as No. IPR2017-02197
over ESIP’s objection that the petition failed to comply with
35 U.S.C. § 312(a)(2). In its final written decision, the
Case: 21-164 Document: 20 Page: 2 Filed: 10/14/2021
2 IN RE: ESIP SERIES 2, LLC
Board reaffirmed that conclusion. The Board further con-
cluded that the claims were shown by Puzhen to be obvious.
ESIP appealed the Board’s decision to this court. On
appeal, this court affirmed the Board’s obviousness deter-
mination. ESIP Series 2, LLC v. Puzhen Life USA, LLC,
958 F.3d 1378 (Fed. Cir. 2020). Citing Thryv, Inc. v. Click-
to-Call Technologies, LP,
140 S. Ct. 1367 (2020), this court
further held that it was barred from reviewing the Board’s
§ 312(a)(2) determination because of
35 U.S.C. § 314(d),
which makes the determination to institute review “final
and nonappealable.” After the Supreme Court denied cer-
tiorari in October 2020, the PTO issued an IPR certificate
cancelling claims 1, 3, and 17 of the ’130 patent.
On June 21, 2021, the Supreme Court issued its deci-
sion in United States v. Arthrex, Inc.,
141 S. Ct. 1970
(2021). In Arthrex, the Court held that the IPR scheme vi-
olates the Appointments Clause in failing to allow for a
principal constitutional officer to review the final action of
the administrative patent judges. The Court held that the
proper remedy was for the Director to “review final PTAB
decisions and, upon review, . . . issue decisions himself on
behalf of the Board.” Arthrex, 141 S. Ct. at 1987. The PTO
then implemented an interim rule requiring requests for
Director review be filed within 30 days of a final written
decision or decision on rehearing. Cf.
37 C.F.R. § 42.71(d).
ESIP then filed a petition for Director review “of Board
decisions in . . . [No.] IPR2017-02197” in view of Arthrex.
Ex. 1 to ECF No. 2 at 1. ESIP received an email response
on July 16, 2021, stating that the petition for Director re-
view “was not filed with[in] 30 days of the entry of a final
written decision or a decision on rehearing by a PTAB
panel. Thus, request for Director review is untimely.” Ex.
2 to ECF No. 2 at 1. ESIP then petitioned this court for a
writ of mandamus to direct the Acting Director to review
ESIP’s petition for review and to hold as unlawful the
PTO’s 30-day deadline for requesting Director review.
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IN RE: ESIP SERIES 2, LLC 3
In response to this court’s inquiry, ESIP contends that
it can directly appeal from the PTO’s email. We reject this
contention. ESIP’s request was akin to a request to reopen
or reconsider the closed IPR based on the belief that the
Board misapplied § 312(a)(2) to the facts here and misap-
prehended the asserted prior art. The Supreme Court has
made clear that where, as here, such request is based
merely on assertions of “material error”—that is, because
it was erroneously made, not because of changed circum-
stances or newly discovered evidence—the agency’s refusal
to grant such request is committed to the agency’s discre-
tion and not subject to judicial review. ICC v. Brotherhood
of Locomotive Eng’rs,
482 U.S. 271, 280 (1987).
We also reject ESIP’s petition to grant mandamus to
compel the Acting Director to consider its request. Manda-
mus is available only where the petitioner shows: (1) a clear
and indisputable right to relief; (2) there are no adequate
alternative legal channels to obtain that relief; and (3) the
grant of mandamus is appropriate under the circum-
stances. See Cheney v. U.S. Dist. Ct. for D. C.,
542 U.S.
367, 380–81 (2004). ESIP has failed to satisfy that stand-
ard here. ESIP could have raised an Appointments Clause
challenge and sought rehearing in its prior appeal. More-
over, ESIP has not pointed to any clear and indisputable
authority that the PTO violated in refusing to reopen and
rehear this particular matter, which is subject to a final
judgment and cancellation certificate.
Accordingly,
IT IS ORDERED THAT:
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4 IN RE: ESIP SERIES 2, LLC
The petition is denied.
FOR THE COURT
October 14, 2021 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
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