Filed: Oct. 30, 2020
Latest Update: Oct. 30, 2020
Summary: Case: 20-148 Document: 17 Page: 1 Filed: 10/30/2020 NOTE: This order is nonprecedential. United States Court of Appeals for the Federal Circuit _ In re: CISCO SYSTEMS INC., Petitioner _ 2020-148 _ On Petition for Writ of Mandamus to the United States Patent and Trademark Office in Nos. IPR2020-00122 and IPR2020-00123. - CISCO SYSTEMS INC., Appellant v. RAMOT AT TEL AVIV UNIVERSITY LTD., Appellee ANDREI IANCU, Under Secretary of Commerce for Intellectual Property and Director of the United States
Summary: Case: 20-148 Document: 17 Page: 1 Filed: 10/30/2020 NOTE: This order is nonprecedential. United States Court of Appeals for the Federal Circuit _ In re: CISCO SYSTEMS INC., Petitioner _ 2020-148 _ On Petition for Writ of Mandamus to the United States Patent and Trademark Office in Nos. IPR2020-00122 and IPR2020-00123. - CISCO SYSTEMS INC., Appellant v. RAMOT AT TEL AVIV UNIVERSITY LTD., Appellee ANDREI IANCU, Under Secretary of Commerce for Intellectual Property and Director of the United States ..
More
Case: 20-148 Document: 17 Page: 1 Filed: 10/30/2020
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: CISCO SYSTEMS INC.,
Petitioner
______________________
2020-148
______________________
On Petition for Writ of Mandamus to the United States
Patent and Trademark Office in Nos. IPR2020-00122 and
IPR2020-00123.
---------------------------------------------------------------------------------
CISCO SYSTEMS INC.,
Appellant
v.
RAMOT AT TEL AVIV UNIVERSITY LTD.,
Appellee
ANDREI IANCU, Under Secretary of Commerce for
Intellectual Property and Director of the United
States Patent and Trademark Office,
Intervenor
______________________
2020-2047, -2049
______________________
Case: 20-148 Document: 17 Page: 2 Filed: 10/30/2020
2 IN RE: CISCO SYSTEMS INC.
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2020-
00122 and IPR2020-00123.
______________________
ON PETITION
______________________
Before DYK, WALLACH, and TARANTO, Circuit Judges.
WALLACH, Circuit Judge.
ORDER
Cisco Systems Inc. appeals from the Patent Trial and
Appeal Board’s decisions denying its petitions to institute
inter partes review (“IPR”). Cisco alternatively seeks a writ
of mandamus to review those decisions. Having received
the parties’ responses to the court’s show cause order, we
now dismiss the appeals and deny mandamus.
I.
Ramot at Tel Aviv University Ltd. owns U.S. Patent
Nos. 10,270,535 and 10,033,465. In June 2019, Ramot filed
a complaint in the United States District Court for the
Eastern District of Texas, alleging that Cisco infringes the
two patents. See Complaint at 1, Ramot at Tel Aviv Univ.
Ltd. v. Cisco Sys., Inc., No. 19-cv-00225 (E.D. Tex. June 12,
2019). Subsequently, in November 2019, Cisco filed peti-
tions seeking IPR of the asserted patents.
In May 2020, the Board denied Cisco’s petitions, citing
its discretion under 35 U.S.C. § 314(a) not to institute re-
view regardless of whether Cisco has met the threshold
limitation of showing a reasonable likelihood of success on
the merits. In doing so, the Board relied on a line of prece-
dential Board decisions in NHK Spring Co. v. Intri-Plex
Technologies, Inc., No. IPR2018-00752, 2018 WL 4373643
(P.T.A.B. Sept. 12, 2018) and Apple Inc. v. Fintiv Inc., No.
IPR2020-00019,
2020 WL 2126495 (P.T.A.B. Mar. 20,
Case: 20-148 Document: 17 Page: 3 Filed: 10/30/2020
IN RE: CISCO SYSTEMS INC. 3
2020) that set forth factors for determining whether effi-
ciency, fairness, and the merits support the exercise of au-
thority to deny institution in view of an earlier trial date in
the parallel proceeding.
In applying those factors here, the Board noted that
trial is scheduled to begin on December 9, 2020 and that
the Board may not issue a final decision in these proceed-
ings until about six months later, see Cisco’s Resp. (ECF
No. 15 in Appeal Nos. 2020-2047, -2049) at Appx7, Appx32;
that the parties spent months briefing the district court on
claim construction issues and expert discovery was sched-
uled to be completed shortly, see id. at Appx8, Appx33; and
that the petitions include the same parties and the same or
substantially the same claims, grounds, arguments, and
evidence as presented in the district court proceeding, see
id. at Appx10–11, Appx35–36. The Board thus concluded
that “instituting would be an inefficient use of Board,
party, and judicial resources.”
Id. at Appx11, Appx36.
Cisco then filed these appeals from the Board’s deci-
sions and alternatively petitioned for a writ of mandamus
to argue that the Board’s decisions, which rely on what
Cisco characterizes as the “NHK/Fintiv rule,” are unlaw-
ful. Through those precedential decisions, Cisco contends,
the Patent Office has impermissibly established a substan-
tive rule governing institution that violates the Adminis-
trative Procedure Act and the America Invents Act because
it was not promulgated by notice-and-comment rulemaking
and also “contravenes Congress’s deliberate judgment that
district court defendants should be able to pursue IPR
alongside the infringement action, so long as they petition
for IPR within one year.” Cisco’s Resp. at 2.
II.
We lack jurisdiction under 28 U.S.C. § 1295(a)(4)(A) to
hear Cisco’s appeals. This court generally does not have
jurisdiction to review the agency’s determination concern-
ing whether proceedings should have been instituted.
Case: 20-148 Document: 17 Page: 4 Filed: 10/30/2020
4 IN RE: CISCO SYSTEMS INC.
Section 314(d) of title 35 of the U.S. Code specifically pro-
vides that “[t]he determination by the Director whether to
institute an inter partes review under this section shall be
final and nonappealable.” That language indicates that
when “the Director decides not to institute, for whatever
reason, there is no review.” St. Regis Mohawk Tribe v.
Mylan Pharms. Inc., 896 F.3d 1322, 1327 (Fed. Cir. 2018);
see also St. Jude Med., Cardiology Div., Inc. v. Volcano
Corp.,
749 F.3d 1373, 1376 (Fed. Cir. 2014) (holding that
this court’s review authority under § 1295(a)(4)(A) does not
extend to appeals from non-institution decisions).
Contrary to Cisco’s claims, the Supreme Court prece-
dent in this area does not hold otherwise. Far from review-
ing a decision declining to institute proceedings, the
Court’s decisions in Thryv, Inc. v. Click-to-Call Technolo-
gies, LP, 140 S. Ct. 1367 (2020), Cuozzo Speed Technolo-
gies, LLC v. Lee,
136 S. Ct. 2131 (2016), and SAS Institute,
Inc. v. Iancu,
138 S. Ct. 1348, 1356 (2018) all involved ap-
peals from a final written decision after a decision to insti-
tute. Moreover, while the Court left open the possibility
that § 314(d) may not bar appeals that implicate constitu-
tional questions or concerns that the agency acted outside
its statutory limits, it made clear that § 314(d) bars review
of matters “closely tied to the application and interpreta-
tion of statutes related to the Patent Office’s decision to in-
itiate inter partes review.”
Cuozzo, 136 S. Ct. at 2141.
We would not need to venture beyond that holding to
reject Cisco’s appeals here. At bottom, Cisco is challenging
whether the Board has authority to consider the status of
parallel district court proceedings as part of its decision un-
der § 314(a) in deciding whether to deny institution. Such
challenges, both procedural and substantive, rank as ques-
tions closely tied to the application and interpretation of
statutes relating to the Patent Office’s decision whether to
initiate review, and hence are outside of our jurisdiction.
Cf. In re Power Integrations, Inc., 899 F.3d 1316, 1321 (Fed.
Cir. 2018) (“Nothing in section 314(d) suggests that the
Case: 20-148 Document: 17 Page: 5 Filed: 10/30/2020
IN RE: CISCO SYSTEMS INC. 5
prohibition on review applies only to the merits of the
Board’s non-institution decisions . . . .”).
Cisco alternatively requests that this court take up its
challenge on mandamus. But Cisco has not met the high
standard for mandamus relief. Without drawing any de-
finitive conclusions on the issue, we cannot say that Cisco
has established a “clear and indisputable right that pre-
cludes” the Board’s exercise of discretion to decline review
here, including its reliance on Board precedent establish-
ing a non-exclusive set of factors relevant to deciding
whether it would be a proper use of resources to conduct
such review when there is a parallel district court proceed-
ing. In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275
(Fed. Cir. 2015), aff’d,
136 S. Ct. 2131 (2016). We note that
Cisco is also pursuing alternative legal channels to raise its
substantive and procedural arguments concerning that
precedent, see Apple Inc. v. Iancu, No. 20-cv-6128 (N.D.
Cal. Aug. 31, 2020), ECF No. 1, and clearly has a readily
available alternative legal channel to raise its arguments
concerning the validity of the asserted patents. While
Cisco prefers to raise those arguments before the Board, it
has no clear and indisputable right to do so.
Accordingly,
IT IS ORDERED THAT:
(1) Appeal Nos. 2020-2047, -2049 are dismissed.
(2) Cisco’s mandamus petition (ECF No. 2 in No. 2020-
148) is denied.
(3) All pending motions in the above-identified cases
are denied as moot.
(4) Each side shall bear its own costs.
Case: 20-148 Document: 17 Page: 6 Filed: 10/30/2020
6 IN RE: CISCO SYSTEMS INC.
FOR THE COURT
October 30, 2020 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
s32
