This morning the Federal Circuit issued a precedential order in a patent case dismissing appeals and denying a petition for a writ of mandamus concerning a decision by the Patent Trial and Appeal Board to institute inter partes review despite the alleged applicability of a prior agreement by the patent owner to arbitrate patent validity disputes. Notably, Judge O’Malley concurred-in-part and dissented-in-part. Here are the introductions to the order and Judge O’Malley’s opinion.

In re Maxpower Semiconductor, Inc. (Precedential Order)

MaxPower Semiconductor, Inc. (“MaxPower”) directly appeals the Patent Trial and Appeal Board’s (“Board”) determinations to institute inter partes review proceedings, which involve four MaxPower patents. MaxPower alternatively seeks a writ of mandamus to review those decisions.

* * *


(1) Appeal Nos. 2021-1950, -1951, -1952, -1953 are dismissed.

(2) MaxPower’s mandamus petition (ECF No. 2 in No. 2021-146) is denied.

(3) Each side shall bear its own costs.

O’MALLEY, Circuit Judge, concurring-in-part and dissenting-in-part.

35 U.S.C. § 294 makes agreements to arbitrate patent validity “valid, irrevocable, and enforceable, except for any grounds that exist at law or in equity for revocation of a contract.” The majority’s denial of a writ of mandamus in this case allows the Patent Trial and Appeal Board to add a new caveat to Congress’s clear instruction that agreements to arbitrate patent validity shall be “valid, irrevocable, and enforceable”—i.e., except during inter partes review.

There is no support for this new exception in the text of the statute itself. Indeed, the Board and the majority ignore the statutory text of § 294 and the strong policy favoring arbitration repeatedly confirmed by the Supreme Court. In so doing, they irreversibly harm MaxPower by denying it the benefit of its arbitration agreement. And they cast a shadow over all agreements to arbitrate patent validity, which, after today, apply only in district courts and not in inter partes review proceedings. Because the majority’s approach is inconsistent with the statutory text and Supreme Court precedent, I dissent from the denial of MaxPower’s mandamus petition in Appeal No. 21-146. I concur in the dismissal of Appeal Nos. 2021-1950, -1951, -1952, and -1953.