Last month, the Federal Circuit issued an order denying a petition for a writ of mandamus in In re SAP America, Inc., a patent case. We have been following the case because it attracted two amicus briefs. The petition presented two questions related to alleged due process and separation of powers violations by the Patent and Trademark Office, focusing on the retroactive revocation of agency guidance related to discretionary denials of petitions for inter partes review. Judge Linn authored the order denying the petition. Here is a summary of the order.
Judge Linn began by outlining the factual background:
In February 2024, Cyandia sued SAP alleging patent infringement. SAP responded by asserting affirmative defenses of invalidity based on IBM’s WebSphere product as a prior art system. SAP also petitioned, in October 2024, for IPR predicated on printed publications describing the WebSphere product. At the time of the petitions, interim guidance from the Director to the Board was in effect that the Board would not “discretionarily deny institution in view of parallel court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.”
Relying on that guidance, SAP stipulated that should IPR be instituted it would not pursue in the civil litigation any ground for invalidity that it raised or reasonably could have raised as a ground for unpatentability in the IPR proceedings. However, on February 28, 2025 . . . the Acting Director rescinded the interim guidance. And on April 7, 2025, the Board denied SAP’s petitions based on the discretionary standard for denying IPR in situations of parallel civil proceedings that was the subject of the now-rescinded interim guidance. The Board reasoned, among other things, that the trial date set in the civil litigation “is set to be earlier than the projected deadline for entering a final written decision” and that SAP’s proposed stipulation “has limited practical effect in reducing the overlapping efforts here and in the Litigation” because it would not prevent SAP from later asserting its defenses in the civil litigation based on the WebSphere system itself. On May 29, 2025, the Acting Director denied review. These petitions followed.
After presenting this background, Judge Linn explained the high standard for mandamus relief, emphasizing that “[t]he petitioner must ‘lack adequate alternative means to obtain the relief’ it seeks.”
On the merits, he noted that “mandamus is ordinarily unavailable for review of institution decisions.” He explained, moreover, that “Congress committed institution decisions to the Director’s discretion” and “protected that exercise of discretion from judicial review by making such determinations ‘final and nonappealable.'” After noting that “SAP failed to raise its challenges before the agency,” he explained that the Federal Circuits’s decision in In re Motorola Solutions, Inc., issued on the same day, “forecloses relief” on the issues SAP presented. For more information on that decision, see yesterday’s summary.
As a result of Judge Linn’s analysis, the panel denied SAP’s petition.