Judges and Academics Tell CAFC to Reject SAP’s Mandamus Bid Over Revocation of Vidal’s Discretionary Denial Guidance

Following a number of amicus briefs filed last week in a case challenging the U.S. Patent and Trademark Office’s (USPTO’s) recission of former Director Kathi Vidal’s guidance on discretionary denial, two more amici have now weighed in supporting the Office.

SAP filed a petition for a writ of mandamus with the U.S. Court of Appeals for the Federal Circuit (CAFC) in June seeking to compel the USPTO “to apply its June 21, 2022, ‘binding agency guidance’ to SAP’s petitions, and all still-active petitions filed before February 28, 2025, and to not pressure SAP or any IPR petitioner into forfeiting in parallel district court litigation an invalidity ground it could not have reasonably asserted in their IPR petition.”

While a number of amici supporting the petition weighed in earlier last week, three retired federal judges, the former vice chair of the International Trade Commission (ITC) and six academic scholars filed a brief on Friday, July 18, opposing SAP’s request for mandamus, arguing chiefly that inter partes review (IPR) petitioners do not have a property right in IPR petitions, which “is a necessary predicate for applying constitutional due process protections.”

SAP Ignores Oil States, and Contradicts Its Own Argument in That Case

The judges joining the brief include retired Chief Judge of the  Federal Circuit Randall Rader; retired CAFC Judge Kathleen O’Malley; and retired U.S. Court of Federal Claims Chief Judge Susan Braden. The other amici include Ronald A. Cass, Former Vice Chairman of the ITC, and six law professors, including Adam Mossoff of the Antonin Scalia Law School at George Mason University and Kristen Jakobsen Osenga of the University of Richmond School of Law.

The amicus brief explains that in United States v. Arthrex, Inc., 594 U.S. 1, 8–9 (2021); SAS Inst., Inc. v. Iancu, 584 U.S. 357, 361–62 (2018); and Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 268 (2016), the Supreme Court has acknowledged that the Patent Trial and Appeal Board (PTAB) is unique in that it “is an administrative agency tribunal with discretionary powers but also has features of an Article III court, such as adversarial proceedings between private parties.”  Congress was clear that the USPTO Director “has the unreviewable discretion to decide whether to institute an IPR proceeding, 35 U.S.C. § 314(d), and in articulating the ‘standards’ for exercising this discretion,” says the brief.

Furthermore, SAP ignores the Supreme Court’s ruling in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, which found that the PTAB/ IPRs are “fundamentally an institution defined by administrative discretion in deciding matters of ‘public right,’ and thus it does not implicate matters of private rights secured under the Constitution.” And beyond that, SAP’s argument here contradicts the argument it made in its Oil States amicus brief, where it said that, since the patent owner “knew that the patent it sought would be subject to a reexamination request by anyone in the world, including the Commissioner (now Director) of Patents,” there was not a valid constitutional claim. “Applying SAP’s own reasoning from its Oil States brief, SAP was on notice here since the creation of IPR proceedings in 2011 that discretionary denials can and will occur,” said the brief of the judges and academics.

No Rulemaking, No Reliance

Another brief supporting the USPTO was filed on Friday by Satya Marar, a Visiting Postgraduate Fellow at the Mercatus Center at George Mason University. Marar argues that the Vidal memo was never made final, was interim guidance, and was rescindable. Since there “was neither a guarantee nor a representation that it would be in effect by the time that petitioner’s IPR came before the PTAB, federal court precedents indicate that the petitioner’s reliance upon it was unreasonable and does not warrant a writ of mandamus that would constrain the PTAB’s Congressionally-granted discretion and require it to apply rescinded interim guidance.” The Court has also made it clear that “the USPTO Director has the unreviewable discretion to decide whether to institute an IPR proceeding, 35 U.S.C. § 314(d), and in articulating the ‘standards’ for exercising this discretion.”

Since the Vidal memo did not go through the rulemaking process, it was not reasonable for SAP to rely on it. “There can be no strong reliance interest where a guidance or rule is temporary, interim, or otherwise likely to change,” says Marar’s brief. Any decision to grant the mandamus request would violate the separation of powers in that it would “preclude the USPTO from exercising the discretion and authority that Congress granted it under the AIA” and because it would “also give interim agency guidance similar effect to a rule,” which would allow “executive agencies to bypass the obligations that Congress has imposed on them under the APA to issue an NPRM and consider public comments prior to adopting a rule.”

Image Source: Deposit Photos
Image ID: 41785253
Author: BrianAJackson