Narrow Opening for Appeals
Court of Appeals Leaves Narrow Opening for Certain IPR Appeals
Last month, the Court of Appeals for the Federal Circuit dismissed an appeal in a case involving Janssen and Mylan. Janssen had filed PIV cases against Teva and Mylan involving the 9,439,906 patent covering Invega Sustenna®(paliperidone).
Mylan filed a Petition for Inter Partes Review challenging the validity of the same patent. The Patent Trial and Appeal Board, noting the fact that the District Court would likely decide the Teva case before the Board reached a decision, did not institute the IPR for review. The Board also noted many of the overlapping legal issues rendered an IPR proceeding unnecessarily duplicative.
Mylan appealed the denial of institution to the Court of Appeals. The Court of Appeals dismissed the appeal. It cited the statute: there is no direct appeal of a Board decision to deny institution.
The Writ of Mandamus, a narrow opening for review
However, Mylan also asked for a Writ of Mandamus, and the Court of Appeals agreed that the Court of Appeals can consider this remedy. Basically, mandamus relief is appropriate when other forms of relief (like a direct appeal) are no longer available. A party seeking relief is essentially asking a court to right a wrong, where the legal systems have failed.
As such, the mandamus relief is reserved for extraordinary cases or situations. While the Court of Appeals agreed that it could hear petitions for mandamus when the Board denies institution of an IPR petition, the standard of relief is “difficult to satisfy.” It reserved review of these petitions for mandamus only for “colorable constitutional claims.”
Mylan argued that the Board denied it due process under the constitution. It argued that the Board could not rely on the timing of the Teva PIV case to deny institution of its IPR. In short, the Teva case (where Mylan was not a party) precluded it from asserting certain legal arguments in the IPR.
The Court of Appeals disagreed. It concluded that Mylan could still assert its arguments and remedies in its own PIV case. Further, it had no right for the IPR petition to move forward as the Board has discretion not to hear a petition.