In Re: Power Integrations, Inc. , 899 F.3d 1316 ( 2018 )

United States Court of Appeals
for the Federal Circuit
______________________
In re: POWER INTEGRATIONS, INC.,
Petitioner
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2018-144, 2018-145, 2018-146, 2018-147
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On Petitions for a Writ of Mandamus to the United
States Patent and Trademark Office in Nos. IPR2017-
01903, IPR2017-01904, IPR2017-01944, and IPR2017-
01975.
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Decided: August 16, 2018
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FRANK SCHERKENBACH, Fish & Richardson, PC,
Boston, MA, for petitioner Power Integrations, Inc. Also
represented by MICHAEL R. HEADLEY, HOWARD G.
POLLACK, NEIL WARREN, Redwood City, CA; OLIVER
RICHARDS, JOHN WINSTON THORNBURGH, San Diego, CA.
MICHAEL HAWES, Baker Botts, LLP, Houston, TX, for
respondent Semiconductor Components Industries, LLC.
Also represented by ROGER FULGHUM; NICHOLAS A.
SCHUNEMAN, BRETT J. THOMPSEN, Austin, TX; LAUREN J.
DREYER, Washington, DC.
______________________
Before O’MALLEY, BRYSON, and CHEN, Circuit Judges.
BRYSON, Circuit Judge.
2 IN RE: POWER INTEGRATIONS, INC.
Power Integrations, Inc. (“PI”) has filed petitions for a
writ of mandamus. The petitions challenge the decisions
of the Patent Trial and Appeal Board denying the institu-
tion of inter partes review of claims from three patents
owned by Semiconductor Components Industries, LLC.
We deny the petitions.
I
PI filed four petitions with the Patent and Trademark
Office under 35 U.S.C. § 311(b) requesting inter partes
review of the claims of three issued U.S. patents. The
patents share a priority date of June 4, 1997. The Board
held that PI had failed to show that any reference cited in
the petitions was publicly accessible before that date and
thus determined that the relied-upon references did not
constitute invalidating prior art.
The petitions collectively relied on three references.
The first, Robert A. Mammano, Voltage-Mode Control
Revisited – A New High-Frequency Controller Features
Efficient Off-Line Performance, 1993 High Frequency
Power Conversion Conference 40 (May 23–27, 1993)
(“Mammano”), is a paper prepared by a presenter at the
High Frequency Power Conversion Conference, held in
Vienna, Virginia, in 1993. PI submitted a declaration by
Dr. Tamas Szepesi, who testified that he attended the
conference and received a copy of the Mammano paper “as
part of the Technical Papers of the Conference.”
The Board determined that the Mammano paper was
not a “printed publication” within the meaning of 35
U.S.C. §§ 102 and 311(b). It found that PI had not pro-
vided any evidence that the Virginia conference was
intended for, or was attended by, persons skilled in the
relevant art. The Board further found that PI had not
submitted evidence concerning whether the paper was
provided to attendees without restriction. In addition, the
Board noted that PI did not argue that Dr. Szepesi was a
person of ordinary skill in the art and that it failed to
IN RE: POWER INTEGRATIONS, INC. 3
offer any evidence that Dr. Szepesi had relevant operation
and fabrication experience at the time of the conference.
The second reference is a data sheet identified as
PWR-SMP3 PWM Power Supply IC (“SMP3 Data Sheet”),
which provides information about one of PI’s products.
The Board determined that the SMP3 Data Sheet did not
qualify as a printed publication.
PI submitted a declaration from its Director of Design
Engineering, David Kung, stating that he had “personal
contemporaneous knowledge that copies of this SMP3
data sheet were published, made available, and distribut-
ed to the public in July of 1991, as also indicated by the
‘7/91’ date code at the bottom of each page of the data
sheet.” The Board, however, found that the reference
“bears no obvious indicia of public accessibility”; it “does
not state plainly the date it was made public[]ly accessi-
ble, contain a mailing stamp or address, or include any
statement of how a member of the public would obtain
this document.” The Board also pointed out that neither
the petition nor Mr. Kung’s declaration provided evidence
that the reference was available to the public or that it
was PI’s standard practice to make such data sheets
publicly accessible.
The third reference is a data sheet identified as
Unitrode UC1828, UC2828, and UC3828 Current Mode
PWM Controller IC Datasheet, Advanced Information, pp.
6–190 to 6–196, dated 11/94 (“UC1828 Data Sheet”). As
in the case of the other two references, the Board found
that the UC1828 Data Sheet did not qualify as a printed
publication.
That reference, which was submitted without a sup-
porting declaration, indicated on its face that it was an
excerpt from the “Unitrode Integrated Circuits Product &
Applications Handbook 1995–96” and carried a label,
seemingly affixed after publication, of Aldridge Associ-
ates, Inc., of Eden Prairie, MN. The reference also bore a
4 IN RE: POWER INTEGRATIONS, INC.
1995 copyright notice and the assertion that it was
“Printed in U.S.A.—January 1995.”
The Board found that PI’s petition failed to identify
the circumstances of the reference’s dissemination or how
interested persons of ordinary skill in the relevant art
could locate the reference. The Board found that the
dates on the face of the reference were at best circumstan-
tial evidence of its publication. The Board also noted that
PI did not rely on the copyright notice as evidence of the
reference’s public accessibility.
Having found that none of the references were shown
to be prior art, the Board concluded that PI had failed to
show it was likely to prevail in its challenges to the pa-
tentability of the claims in issue, and it therefore denied
the petitions in four detailed written decisions. PI sought
rehearing in each case. The Board denied the requests for
rehearing, filing in each case a detailed opinion explain-
ing its decision.
II
Section 314(a) of Title 35 specifies that “[t]he Director
may not authorize an inter partes review to be instituted
unless the Director determines that . . . there is a reason-
able likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the peti-
tion.” Section 314(c), entitled “Notice,” provides that
“[t]he Director shall notify the petitioner and patent
owner, in writing, of the Director’s determination under
subsection (a), and shall make such notice available to the
public as soon as is practicable.” Section 314(d), entitled
“No Appeal,” adds that “[t]he determination by the Direc-
tor whether to institute an inter partes review under this
section shall be final and nonappealable.”
In Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct.
2131 (2016), the Supreme Court held that section 314(d)
bars review of a Board decision to institute inter partes
IN RE: POWER INTEGRATIONS, INC. 5
review except in unusual circumstances, such as when an
appeal implicates constitutional questions or presents
“other questions of interpretation that reach, in terms of
scope and impact, well beyond” section 314(d). Id. at
2141. In the case of “an ordinary dispute about the appli-
cation of certain relevant patent statutes concerning the
Patent Office’s decision to institute inter partes review,”
the Court ruled that section 314(d) would preclude review.
Id. at 2139; see id. at 2142. Although the Cuozzo case
involved an appeal from a decision to institute inter
partes review, the Court made it clear that its analysis
would apply equally to an attempt to appeal from a deci-
sion denying institution. See id. at 2140 (“[T]he agency’s
decision to deny a petition is a matter committed to the
Patent Office’s discretion.”); 1 see also Saint Regis Mohawk
Tribe v. Mylan Pharms. Inc., Nos. 2018-1638 et al., slip
op. at 8 (Fed. Cir. July 20, 2018) (“If the Director decides
not to institute, for whatever reason, there is no review.
In making this decision, the Director has complete discre-
tion to decide not to institute review.” (citing Oil States
Energy Servs. v. Greene’s Energy Group, LLC, 138 S. Ct.
1365, 1371 (2018)).
Faced with that statutory prohibition on appeal, PI
does not directly appeal the Board’s determinations not to
institute inter partes review. Instead, PI seeks to obtain
review of the non-institution decisions through petitions
for mandamus covering all four of the Board’s orders. But
a writ of mandamus is not intended to be simply an
1 Even Justice Alito, dissenting in Cuozzo, made
clear that his dissent was limited to review of decisions to
institute inter partes review as part of the review of a
final decision in the case; he acknowledged that his inter-
pretation of the statute would not ordinarily permit
review of decisions not to institute inter partes review.
Cuozzo, 136 S. Ct. at 2153 n.6 (Alito, J., dissenting).
6 IN RE: POWER INTEGRATIONS, INC.
alternative means of obtaining appellate relief, particular-
ly where relief by appeal has been specifically prohibited
by Congress. See Roche v. Evaporated Milk Ass’n, 319
U.S. 21, 26 (1943) (Mandamus may not “be used merely as
a substitute for the appeal procedure prescribed by the
statute”); In re Pollitz, 206 U.S. 323, 331 (1907) (Manda-
mus “cannot . . . be used to perform the office of an ap-
peal.”). To obtain the remedy of mandamus, a party must
show that its right to issuance of the writ is “clear and
indisputable,” and that there are no adequate alternative
legal channels through which it may obtain that relief.
Moreover, “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 v. U.S. Dist. Court for the Dist. of
Columbia, 542 U.S. 367, 380–81 (2004); see also Kerr v.
U.S. Dist. Court for the N. Dist. of Cal., 426 U.S. 394, 403
(1976).
We hold that mandamus does not lie in this case, both
because PI has not shown a clear and indisputable right
to issuance of the writ and because relief by way of man-
damus would not be appropriate here. We have held that
the statutory prohibition on appeals from decisions not to
institute inter partes review cannot be sidestepped simply
by styling the request for review as a petition for manda-
mus. In re Dominion Dealer Sols., LLC, 749 F.3d 1379,
1381 (Fed. Cir. 2014); see also Medtronic, Inc. v. Robert
Bosch Healthcare Sys., Inc., 839 F.3d 1382, 1386 (Fed.
Cir. 2016); GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309,
1312–13 (Fed. Cir. 2015) (same analysis as applied to
“covered business method” review proceedings).
PI seeks to avoid that authority by claiming that it is
not attempting to obtain review of the Board’s non-
institution decision. Instead, PI claims, it is seeking to
vindicate its rights under the Administrative Procedure
Act (“APA”) to a reasoned decision by the agency based on
IN RE: POWER INTEGRATIONS, INC. 7
a proper consideration of all the relevant evidence in its
petitions and application of the correct legal principles.
With respect to the claim that the Board did not
provide an adequate explanation for its non-institution
decisions, PI relies on section 6(d) of the APA, codified at
5 U.S.C. § 555(e). That statute requires agencies to
provide a “[p]rompt notice” of the denial “of a written
application, petition, or other request of an interested
person made in connection with any agency proceeding,”
and a “brief statement of the grounds for denial,” unless
the denial is “self-explanatory.” The cases applying that
statute explain that the required statement “not only
ensures the agency’s careful consideration of such re-
quests, but also give parties the opportunity to apprise
the agency of any errors it may have made and, if the
agency persists in its decision, facilitates judicial review.”
Tourus Records, Inc. v. Drug Enforcement Admin., 259
F.3d 731, 737 (D.C. Cir. 2001); Butte Cty. v. Hogen, 613
F.3d 190, 194 (D.C. Cir. 2010); Roelofs v. Sec’y of the Air
Force, 628 F.2d 594, 599–601 (D.C. Cir. 1980). The pur-
pose of facilitating review does not apply in this case,
however, because this court has no reviewing authority
over the agency’s non-institution decision. See Cuozzo,
136 S. Ct. at 2139. Also inapplicable are the purposes of
ensuring careful consideration by the agency and enabling
the affected party to apprise the agency of its errors, as
the Board’s explanations for its actions were detailed, and
PI was able to challenge those explanations in its requests
for rehearing.
The notice required of an agency under the APA “is
modest.” Roelofs, 628 F.2d at 601. All that is required is
that the agency “explain why it decided to act as it did.”
Butte, 613 F.3d at 194. Here, we cannot say that the
Board clearly and indisputably failed to fulfill that obliga-
tion. The Board issued four decisions, each from 15 to 20
pages long, supplemented by four substantive decisions on
rehearing, in which the Board explained in detail why it
8 IN RE: POWER INTEGRATIONS, INC.
concluded that the Mammano, SMP3 Data Sheet, and
UC1828 Data Sheet references had not been shown to be
publicly accessible before the priority date. There is thus
no merit to PI’s argument that mandamus is appropriate
because of a wholesale failure by the Board to explain its
non-institution decisions.
At bottom, PI’s request for more elaborate “notice” of
the reasons for the Board’s actions is really just the
camel’s nose under the tent. PI’s real complaint is not
that the Board did not explain itself well enough for PI to
understand what the Board did. PI understands perfectly
well what the Board did, but it regards the Board’s ac-
tions as legally and factually incorrect, and it seeks this
court’s intervention to overturn the Board’s decisions not
to institute inter partes review. What PI ultimately
wants is not just to be given a more complete explanation
of the Board’s action, but for this court to review that
decision on the merits.
That much is clear from the petition, in which PI
argues that the “brief statement of the grounds for denial”
in section 6(d) of the APA requires that the agency’s
statement be “the product of reasoned decisionmaking,”
Pet. 22, and that an agency decision that “is premised on
an incorrect legal standard or a misapplication of that
standard” cannot be one of reasoned decision-making, id.
at 24. From those premises, PI proceeds to challenge the
Board’s decisions on the merits and argues this court
should entertain its merits-based challenge in this man-
damus proceeding.
That analysis runs head-on into the Supreme Court’s
decision in Cuozzo and this court’s decision in In re Do-
minion Dealer Solutions, LLC. The Supreme Court in
Cuozzo determined that Congress intended to bar appel-
late review of institution decisions, at least when a patent
holder merely challenges the Board’s determination
regarding whether the information presented in the
IN RE: POWER INTEGRATIONS, INC. 9
petition shows that there is a reasonable likelihood of
success or “where a patent holder grounds its claim in a
statute closely related to” the decision whether to insti-
tute inter partes review. 136 S. Ct. at 2142. Cuozzo’s
claim, the Court noted, “is little more than a challenge to
the Patent Office’s conclusion, under § 314(a), that the
‘information presented in the petition’ warranted review.”
Id.
The same is true here. The essence of PI’s claim—
that the Board’s analysis “is premised on an incorrect
legal standard or a misapplication of that standard”—is
nothing more than a challenge to the Board’s conclusion
that the information presented in the petitions did not
warrant review. And in Dominion Dealer Solutions, this
court made clear that where section 314(d) bars an appeal
from a Board decision not to institute inter partes review,
the petitioning party “has no ‘clear and indisputable’ right
to challenge [the] non-institution decision directly in this
court, including by way of mandamus.” 749 F.3d at 1381.
Similar analysis applies to PI’s procedural complaints
that the Board ignored key evidence, “applied an overly
rigid legal standard for public availability,” and improper-
ly required it to “definitively prove [public availability] in
its petition rather than evaluating whether PI would be
reasonably likely to do so after full development of the
factual record.” Pet. 19–20. Those are precisely the kinds
of claims that would form the basis for an appellate
challenge to the Board’s non-institution decision if such a
challenge were authorized. For this court to entertain
such claims in response to a petition for mandamus would
convert the mandamus procedure into a transparent
means of avoiding the statutory prohibition on appellate
review of agency institution decisions.
A disappointed petitioner cannot by-pass the statuto-
ry bar on appellate review simply by directing its chal-
lenge to asserted procedural irregularities rather than to
10 IN RE: POWER INTEGRATIONS, INC.
the substance of the non-institution ruling. Nothing in
section 314(d) suggests that the prohibition on review
applies only to the merits of the Board’s non-institution
decisions and leaves this court free to review the Board’s
decisions for perceived flaws in the way the Board ana-
lyzed the evidence before it. To draw such a distinction
would inevitably lead to this court’s examination of the
correctness of the Board’s legal and factual conclusions;
i.e., it would result in this court’s review of the legal and
factual bases of the Board’s non-institution decisions,
which is just what Congress sought to prohibit.
This is not to say that mandamus will never lie in
response to action by the agency relating to the non-
institution of inter partes review. The circumstances
described by the Supreme Court in Cuozzo as illustrations
of issues for which an appeal might be justified (e.g.,
constitutional issues, issues involving questions outside
the scope of section 314(d), and actions by the agency
beyond its statutory limits) would be potential candidates
for mandamus review as well. See Cuozzo, 136 S. Ct. at
2141–42; SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359
(2018). But this case involves no issues extraneous to the
application of patent law principles of unpatentability
based on printed publications, nor does it involve any
“shenanigans” on the part of the Board that might justify
appellate review or review by mandamus. See id. at 2142;
see also SAS, 138 S. Ct. at 1359.
As with its argument about an inadequate explana-
tion for the Board’s actions, PI’s complaints about the
Board’s factual and legal analysis and its procedural
objections to the Board’s rulings are designed to obtain a
ruling from this court that will ultimately result in over-
turning the Board’s non-institution decision. And, as to
that relief, the bar to appeal is fatal, at least absent some
grave abuse of the statutory procedure that has not been
shown to be present here.
IN RE: POWER INTEGRATIONS, INC.
11
Accordingly,
IT IS ORDERED THAT:
The petitions are denied.