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Is The Sliver of Light a Door Opening or Closing?

Bylined Articles
Sterne, Kessler, Goldstein & Fox P.L.L.C.

From the beginning of AIA proceedings, Petitioners that have lost at institution decision phase have tried using Mandamus to circumvent the statutory lack of appeal from institution decisions. Mylan Laboratories Ltd. v. Janssen Pharmaceutica, N.V., Case No. 2021-1071, Slip. Op. at 10 (Fed. Cir. Mar. 12, 2021). All have lost. Id. Which is no different than what was decided in MylanId. at 13-14.

But here, the Court left a sliver of hope for appeals from institution decisions. After finding that filing of a Petition triggers a right to Mandamus review (Id. at 10), the Court set forth one way to overturn an institution decision: a colorable constitutional claim. Id. at 12. Mylan tried asserting three: (1) Fintiv should have been adopted through note-and-comment rulemaking not making a decision precedential, (2) Fintiv unlawfully shortens the limitations period for filing under35 U.S.C. § 315(b), and (3) the Fintiv standard was unconstitutionally applied. Id. at 10-11. 

After providing hope, the Court quickly dashed it, stating, “it is difficult to imagine a mandamus petition that challenges a denial of institution and identifies a clear and indisputable right to relief.” Id. at 13. First, the Court held “[g]iven the limits on our reviewability, Mylan’s ultra vires argument cannot be a basis for granting the petition for mandamus.” Id. And “Mylan’s time bar argument under § 315(b) fails for the same reason.” Id. “Finally, Mylan fails to state a colorable claim for constitutional relief. It does not identify a deprivation of ‘life, liberty, [or] property’ so any procedural due process challenge is foreclosed.” Id.

In conclusion, the Court found “Mylan had no right for its petition to be considered without reference to the Teva litigation and no right to an IPR.” Id. Whether a party will find the perfect issue that meets the Court’s criteria in the future is still an open question.


This article appeared in the March 2021 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.