This morning the Federal Circuit released a precedential order denying a petition for a writ of mandamus seeking to compel the United States Patent and Trademark Office to “accept and consider” requests for USPTO Director rehearing of decisions denying institution of inter partes review and post grant review. Notably, Judge Reyna wrote a concurring opinion. The Federal Circuit also released a nonprecedential order dismissing an appeal for failure to prosecute. Here is text from the orders.

In re Palo Alto Networks, Inc. (Precedential Order)

Palo Alto Networks, Inc. (“PAN”) petitions for a writ of mandamus to compel the United States Patent and Trademark Office (“USPTO”) to accept and consider its Requests for Director Rehearing of decisions denying institution of inter partes review (“IPR”) and post grant review (“PGR”) for patents owned by Centripetal Networks, Inc. (“Centripetal”). PAN argues that the Director’s current policy of refusing to accept such requests is contrary to the Appointments Clause of the U.S. Constitution, Art. II, § 2, cl. 2, as interpreted by the Supreme Court in United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021). The USPTO and Centripetal oppose, and oral argument was held on June 21, 2022.

We deny the petition, concluding that there has been no violation of the Appointments Clause.

REYNA, Circuit Judge, concurring.

I concur with my colleagues that PAN’s petition for writ of mandamus should be denied. But I disagree as to why.

* * *

I would deny the petition for writ of mandamus on grounds that it fails to meet the high standard set for mandamus relief. First, this is not an extraordinary case requiring extraordinary relief. PAN’s desired relief already exists. The facts here are clear. The agency has a process for the Director to exercise her discretion to accept (and thereby consider) requests for review. This process aligns with the Supreme Court’s decision in United States v. Arthrex, 141 S. Ct. 1970, 1988 (2021) (“To be clear, the Director need not review every decision of the PTAB. What matters is that the Director have the discretion to review decisions rendered by APJs.”).

Second, PAN also fails to demonstrate a clear and indisputable right to a writ that would compel the Director to do what she has already done. We should not compel an agency to take specific action that the agency demonstrates it has already taken. And third, because the remedy PAN seeks already exists, the issuance of a writ would not be appropriate under the circumstances. Mandamus should be reserved for extraordinary cases requiring extraordinary relief and not serve to provide declaratory relief in a run-of-the-mill action.

Alford v. United States (Nonprecedential Order)

The appellant having failed to file the brief required by Federal Circuit Rule 31(a) within the time permitted by the rules, it is

ORDERED that the notice of appeal be, and the same hereby is, DISMISSED, for failure to prosecute in accordance with the rules.