[00:00:00] Speaker 00: The United States Court of Appeals for the Federal Circuit is now open and in session. [00:00:05] Speaker 00: God save the United States and its honorable court. [00:00:10] Speaker 06: Our case on the docket today is 21-1071, Myelin Laboratories versus Janssen Pharmaceuticals. [00:00:19] Speaker 06: Please proceed, Mr. Shaw. [00:00:23] Speaker 02: Thank you, Your Honor. [00:00:25] Speaker 02: May it please the court, Pratik Shaw for Appellee Janssen Pharmaceuticals. [00:00:29] Speaker 02: As both this court and the Supreme Court have made clear, the decision not to institute an IPR is committed to the PTO's discretion and, according to the plain terms of Section 314D, is final and non-appealable. [00:00:44] Speaker 02: It is thus no surprise that neither this court nor the Supreme Court has ever entertained an appeal from a denial of institution. [00:00:53] Speaker 02: Mylan's appeal is a particularly poor vehicle to break from that uniform precedent. [00:00:59] Speaker 02: First, Miland's claim that definitive factors exceed the PTO's statutorily conferred discretion is foreclosed by Quozo and Thrive, which bar appeals that are, quote, closely tied to the application and interpretation of statutes related to IPR institution. [00:01:17] Speaker 02: Second, dressing up that claim in constitutional garb cannot salvage the appeal. [00:01:23] Speaker 02: Miland's due process claim merits no further review. [00:01:26] Speaker 02: where Mylan lacks any protectable property right in the first place, had a fair opportunity to address definitive factors before the PTAB, and in any event, can fully challenge the validity of the patent claims at issue in federal district court, which, as the PTAB recognized, Mylan is in fact currently doing. [00:01:46] Speaker 02: For those same reasons, Mylan lacks any right clear enough or claimed colorable enough [00:01:53] Speaker 02: to warrant the extraordinary exercise of mandamus relief, which is presumably why Mylan did not even seek it in its response to our motion to dismiss. [00:02:03] Speaker 02: Mandamus may be a viable safety valve in extraordinary cases, but this one does not come close. [00:02:09] Speaker 02: This appeal should be dismissed. [00:02:16] Speaker 02: I'm happy to answer any questions from the panel or continue making affirmative arguments. [00:02:21] Speaker 01: Counsel, this is Judge Newman. [00:02:23] Speaker 01: What's your understanding of the philosophy, the policy behind the statute, the legislation, and the system that we have that institution decisions are not appealable? [00:02:40] Speaker 02: Sure, Your Honor. [00:02:41] Speaker 02: I think what Congress was trying to do was to streamline things, to give those who wanted to challenge [00:02:48] Speaker 02: a patent is an efficient mechanism to do so, but also not to bog down the system. [00:02:53] Speaker 02: And so Congress carefully calibrated a scheme that allowed for review of final written decisions. [00:03:00] Speaker 02: And that makes sense because those final written decisions can have serious consequences. [00:03:05] Speaker 02: It can deprive a patent owner of a property right. [00:03:09] Speaker 02: It has a stopple effect, all of those sort of things. [00:03:12] Speaker 02: However, at the same time, [00:03:14] Speaker 02: Congress carefully calibrated a screen that did not allow appeals of a denial of institution. [00:03:21] Speaker 02: And that also makes sense because as the Supreme Court recognized in Quozo, denials as opposed to grants of institution are committed to agency discretion and denials present far less concern because a challenger is still generally free to pursue district court Article III federal court [00:03:41] Speaker 02: challenges to the validity of the patent. [00:03:44] Speaker 06: And that's why, as Justice... Now, so, if this is Judge Moore, you said denials as opposed to grants are committed to agency discretion. [00:03:53] Speaker 06: That's a direct quote. [00:03:54] Speaker 06: That's not accurate, is it? [00:03:57] Speaker 02: I think so, Your Honor. [00:03:58] Speaker 06: Are you saying granting is not agency that has no discretion over whether to grant or not? [00:04:04] Speaker 02: They only... No, Your Honor. [00:04:05] Speaker 02: It has some discretion, but it's not [00:04:07] Speaker 02: complete discretion. [00:04:09] Speaker 02: And that's because to grant the PTAB at least has to find that it meets, that there's a likelihood of success on the merits, the 314A criterion. [00:04:20] Speaker 02: But denial, the PTAB has greater discretion. [00:04:25] Speaker 02: That is, it can deny even if it finds that there's a likelihood of success on the merits. [00:04:31] Speaker 02: And so that's why in QOZO, in the majority court's opinion, and this is at page 20, [00:04:35] Speaker 02: 140, it talks about the difference between a grant and a denial. [00:04:40] Speaker 02: And that's when Justice Breyer for the Court says, when it comes to denials, and this is the exact quote from Cuozzo at 2140, the agency's decision to deny a petition is a matter committed to the Patent Office's discretion. [00:04:55] Speaker 02: And it cites Section 701A2, the APA, which has certain decisions [00:05:00] Speaker 02: are fully committed to an agency discretion by law. [00:05:03] Speaker 02: So a denial is fully committed to the agency's discretion, as opposed to a grant where they have a lot of discretion, but they at least have to satisfy the statutory factor of there being a likelihood of success for review. [00:05:15] Speaker 06: So that's the... Counsel, this is Judge Morgan. [00:05:18] Speaker 06: It's my understanding that under APA Section 701A2, while [00:05:24] Speaker 06: decisions are committed to the discretion of the agency, they can be challenged for constitutional reasons. [00:05:29] Speaker 06: Is that your understanding of the state of administrative law as well? [00:05:33] Speaker 02: Your Honor, there are certain cases where the court has read a decision to be committed to the agency discretion by law and yet entertain a constitutional claim. [00:05:45] Speaker 02: I think, for example, you know, Webster Vito is one of those Supreme Court cases where it's done that. [00:05:52] Speaker 02: But in doing so, [00:05:53] Speaker 02: The court says the hallmark is congressional intent. [00:05:57] Speaker 02: You have to look at whether Congress intended to keep a review mechanism available through there for constitutional claims. [00:06:06] Speaker 02: Here, every indication of what Congress was trying to do in the IPR scheme was to draw a distinction between denials of institution [00:06:16] Speaker 02: and grants of a final institution that results in a final written decision that would be appealable. [00:06:22] Speaker 06: And this court, yes. [00:06:24] Speaker 06: Yes, Your Honor. [00:06:24] Speaker 06: But isn't that exactly what COSO held? [00:06:27] Speaker 06: I mean, didn't the Supreme Court in COSO exempt out the possibility of Supreme Court challenges? [00:06:35] Speaker 06: I mean, this is exactly what they looked at. [00:06:37] Speaker 06: They looked at 314 and the extent of its impact on reviewability, and they held that [00:06:45] Speaker 06: Even in spite of 314, constitutional challenges may be the sort of thing that are still challengeable even though 314 exists. [00:06:55] Speaker 06: So hasn't the Supreme Court already opened the door to the constitutional challenges and thereby sort of said expressly what they believe Congress would permit? [00:07:07] Speaker 02: So, Your Honor, you're right, they did say that, but in the context of review of a final written decision that goes back to collaterally attack the institution decision, and QOZO makes this explicit in that particular section of its opinion where it discusses the potential constitutional exception. [00:07:26] Speaker 05: This is Judge Stoll. [00:07:28] Speaker 05: I mean, that case did not involve [00:07:31] Speaker 05: It involved a final written decision, right? [00:07:34] Speaker 02: Correct, Your Honor. [00:07:34] Speaker 05: Yes, Your Honor. [00:07:35] Speaker 05: So I don't know that we can really read the court's opinion to address the situation in front of us. [00:07:41] Speaker 05: Do you agree with that? [00:07:42] Speaker 05: I mean, I don't think it forecloses the possibility that on an institution decision, if there's a true constitutional violation, that a court wouldn't be able to review that. [00:07:54] Speaker 05: Do you agree with that? [00:07:56] Speaker 02: Your Honor, I think it comes close. [00:07:58] Speaker 02: I do agree with you that Quozo was [00:08:00] Speaker 02: Addressing final written decisions and that's why the when it phrased the exception for constitutional claims that specifically said we do not categorically preclude review of a final decision. [00:08:12] Speaker 02: And then it says such shenanigans referring to the constitutional exception may be proper reviewable in the context of section 319. [00:08:21] Speaker 02: And again, 319. [00:08:22] Speaker 05: But it didn't express 314, right? [00:08:24] Speaker 05: Because it didn't have 314 decision. [00:08:28] Speaker 05: It didn't have an institution decision in front of it. [00:08:31] Speaker 05: I want to ask you something else. [00:08:32] Speaker 05: I understand your view. [00:08:34] Speaker 05: But you had mentioned Webster. [00:08:36] Speaker 05: Are you familiar with our court's decision in Hellman, which cites Webster? [00:08:42] Speaker 02: I may need a refresher on that one. [00:08:44] Speaker 05: OK. [00:08:45] Speaker 05: Hellman is a case where there was a veteran's case. [00:08:47] Speaker 05: And the statutory provision there said, [00:08:50] Speaker 05: that the decision of an administrative judge shall be final and not subject to any further appeal. [00:08:55] Speaker 05: But we said that that did not preclude judicial review of colorable constitutional claims. [00:09:02] Speaker 05: And we cited Webster for the view that where Congress intends to preclude judicial review of constitutional claims, its intent to do so must be clear, like notwithstanding that other things might not be appealable, a constitutional claim [00:09:16] Speaker 05: is going to be allowed unless there's some extra additional exception provided. [00:09:22] Speaker 05: How do you respond to that? [00:09:25] Speaker 02: Well, Your Honor, I think in Webster v. Doe, what's paramount is where the court reads in that exception to the statute, which might otherwise seem categorical, it does so based upon a judicial presumption based on congressional intent. [00:09:43] Speaker 02: And then it looks at the scheme, it looks at the congressional scheme and makes a determination, would Congress want to have let such a claim go forward? [00:09:53] Speaker 02: And again, for all the reasons that I've mentioned, every indication in this congressional scheme is that denials of institution are to be treated categorically as opposed to grants. [00:10:07] Speaker 05: What if the PTO clearly [00:10:12] Speaker 05: made of constitutional violation in its non-institution decision. [00:10:17] Speaker 05: Wouldn't there have to be some place that the petitioner could go to seek help from the court? [00:10:25] Speaker 02: Yes, Your Honor. [00:10:26] Speaker 02: I think if there was a situation of a clear or flagrant constitutional violation, say racial animus or something like that, in an institution decision, I think mandamus would provide the safety valve in this court's decision and in-ray power integrations. [00:10:41] Speaker 02: That's at 899 F3D 1316. [00:10:43] Speaker 02: This court said, look, mandamus is an extraordinary relief. [00:10:48] Speaker 02: And in the ordinary case, we're not going to sidestep the statutory bar by using mandamus. [00:10:54] Speaker 02: But then it said a caveat that it doesn't mean that mandamus will never lie in response to an action. [00:11:02] Speaker 02: And so it kept in a safety valve. [00:11:04] Speaker 02: And we think that safety valve would be appropriate if you really had a flagrant constitutional violation [00:11:11] Speaker 02: then mandamus would be the safety valve so that the court could step in and stop that. [00:11:17] Speaker 02: But here, of course, if we look at the constitutional claim being alleged, it is a due process claim. [00:11:24] Speaker 02: Here, that does not pass the extraordinary test, let alone even the colorable test, because one, Myland is never identified. [00:11:32] Speaker 02: In order to have a due process claim, you have to have a deprivation of life [00:11:35] Speaker 02: liberty or property. [00:11:37] Speaker 02: They haven't identified any of those. [00:11:38] Speaker 02: They have no protectable property right. [00:11:40] Speaker 02: They don't have a patent at stake. [00:11:42] Speaker 02: They don't have a property right in having a discretionary institution proceeding. [00:11:48] Speaker 06: Council, do you understand, and I'm sure Mylan will speak to this directly, do you understand their [00:11:57] Speaker 06: argument to be we've been deprived of due process because you didn't institute or we've been deprived by due process because in determining you didn't make a fair determination of whether to institute because you allowed inappropriate material to enter into the analysis. [00:12:17] Speaker 06: Which of those two do you understand their due process argument to be? [00:12:21] Speaker 02: I understand it to be the latter and in particular I think what's [00:12:26] Speaker 02: their due process claim is the fact that the PTAB looked at the fact that the TEVA litigation was going on. [00:12:34] Speaker 02: The problem, Your Honor, with that sort of due process claim and why it doesn't even pass the colorable test is the PTAB didn't just look at the TEVA litigation. [00:12:43] Speaker 02: It noted the fact that Myland is currently litigating the validity of these very same patent claims right now in an Article III federal district court [00:12:53] Speaker 02: Well, they will have every opportunity to make whatever arguments they want to make against the validity of the patent. [00:13:01] Speaker 06: But counsel, I definitely trust me. [00:13:03] Speaker 06: I have all those facts well in hand and you're not you're not misrepresenting any of them. [00:13:09] Speaker 06: So you need not worry. [00:13:10] Speaker 06: But when you're saying it's not colorable, I read this PTO decision as relying primarily [00:13:19] Speaker 06: upon the TEVA litigation, as well it should and could, because that is the litigation that at the time originally it was about to go to trial. [00:13:30] Speaker 06: It's now long since gone to trial. [00:13:32] Speaker 06: I don't know if you know. [00:13:33] Speaker 06: Has there been any verdict in that case? [00:13:35] Speaker 02: There has not been a decision yet in that case. [00:13:39] Speaker 06: Okay. [00:13:39] Speaker 06: Well, but in any event, [00:13:41] Speaker 06: Part of the reason the PTO put so much emphasis on that, no doubt, is because it was so imminent. [00:13:47] Speaker 06: It would be resolved way before the administrative proceeding could have ever been resolved. [00:13:53] Speaker 06: And, you know, I guess for me there's a line between a meritless due process challenge and one that's not even colorable. [00:14:02] Speaker 06: And I think that if you're denied fair process, i.e. [00:14:08] Speaker 06: if an agency is looking beyond the facts [00:14:11] Speaker 06: it should be looking at and at other facts that maybe it shouldn't, then maybe that is a colorable due process claim, though perhaps in this case, meritless. [00:14:21] Speaker 06: What are your thoughts about that? [00:14:23] Speaker 02: Yes, Your Honor, I appreciate the distinction here. [00:14:25] Speaker 02: I don't think we even get to the colorable because they are not alleging, for example, that the PTAB didn't give them an opportunity to address the symptom factors or to address the parallel litigation. [00:14:38] Speaker 02: What happened here was [00:14:39] Speaker 02: after Janssen filed its response to the petition, the PTAP actually granted special leave for Mylan to file a reply brief just to address the Fintive-related factors. [00:14:54] Speaker 02: And so they had a full 10-page brief just on the Fintive factors and to address the Teva litigation, to address the Mylan litigation. [00:15:03] Speaker 02: So I don't think their claim could be construed as one about having a fair opportunity to make the argument. [00:15:09] Speaker 02: Instead, their claim is we were deprived. [00:15:12] Speaker 02: Again, a due process violation requires deprivation of life, liberty, or property interest here without process of law. [00:15:20] Speaker 02: They don't have a property right at stake in the first place. [00:15:23] Speaker 02: But even if you looked past that, they have another forum. [00:15:28] Speaker 02: The right that they're focused on is the ability to challenge the validity of these patent claims. [00:15:34] Speaker 02: And as we've already discussed, [00:15:36] Speaker 02: they obviously have that right. [00:15:38] Speaker 02: They're not bound in any way by the Teva litigation. [00:15:41] Speaker 02: Whatever happens in the Teva litigation will not affect their ability to argue in the Mylan litigation against the validity of these claims. [00:15:51] Speaker 02: This is unlike any of the due process cases. [00:15:54] Speaker 06: Mr. Shaw, what about the argument that in the administrative [00:16:02] Speaker 06: proceeding before the agency, the standard is preponderance of the evidence, so they have a lower burden there. [00:16:09] Speaker 06: If forced to only litigate in the district court, by contrast, they have to meet the clear and convincing standard. [00:16:15] Speaker 06: That does sort of change the nature of their legal burdens, doesn't it? [00:16:21] Speaker 02: It may change the nature of their burden, Your Honor, but nobody has a property right in having a lower burden of proof [00:16:30] Speaker 02: in a particular proceeding. [00:16:32] Speaker 02: And, Your Honor, in Quozo, actually, Justice Alito spoke to this point, and this was the one point, Justice Alito was in dissent, but the one point in which he agreed with the majority in Quozo was with respect to denials of institution. [00:16:46] Speaker 02: Even though denials were not squarely at issue, that was a final written decision case. [00:16:50] Speaker 02: The one point, Justice Alito says, in which he's in agreement with the majority was on denials of institution. [00:16:57] Speaker 02: And what he says there is, [00:16:59] Speaker 02: It is true that my interpretation, this is from footnote six of Justice Alito's dissent after he says, I agree with the majority that a denial as opposed to a grant is committed to agency discretion and unreviewable under normal principles of administrative law. [00:17:15] Speaker 02: Here's what he says in footnote six. [00:17:16] Speaker 02: It is true that my interpretation leaves no apparent avenue, short of mandamus at least, for judicial review of decisions not to institute inner part as review. [00:17:27] Speaker 02: This demonstrates that the presumption of reviewability has its limits, nor is it surprising that Congress would design such a scheme. [00:17:34] Speaker 02: A patent challenger does not have nearly as much to lose from an erroneous denial of IPR as a patent owner stands to lose from an erroneous grant of IPR. [00:17:44] Speaker 02: Although such a challenger loses some of the advantages of IPR, such as a more favorable claim construction standard, no longer the case, and a lower burden of proof, as you mentioned Judge Moore, [00:17:55] Speaker 02: Quote, it remains free to challenge the patent's validity in litigation. [00:17:59] Speaker 02: A patent owner, on the other hand, risks the discretion of a valuable property, right? [00:18:03] Speaker 02: So that fact is not of constitutional dimension, the fact that it may not be able to avail itself of some of the benefits of the IPR process. [00:18:18] Speaker 06: Okay, thank you, Mr. Shaw. [00:18:19] Speaker 06: Unless there's any other questions from my colleagues, we should hear from Ms. [00:18:23] Speaker 06: Patterson. [00:18:24] Speaker 02: Thank you, Your Honors. [00:18:26] Speaker 04: Okay. [00:18:29] Speaker 04: If the court is ready for me to proceed. [00:18:32] Speaker 04: Let's proceed. [00:18:35] Speaker 04: Thank you. [00:18:36] Speaker 04: May it please the court, Melissa Patterson for the USPTO. [00:18:41] Speaker 04: We agree with Danson that the type of decision the court has before it right now, a decision declining to institute an IPR, [00:18:50] Speaker 04: has been uniformly and correctly held to be beyond this court's appellate jurisdiction. [00:18:57] Speaker 06: I think that's the... Ms. [00:18:59] Speaker 06: Patterson, do you likewise agree with Jansen that mandamus relief would be available for flagrant constitutional violations? [00:19:11] Speaker 04: Yes, we do, Your Honor. [00:19:12] Speaker 04: We do not think that 314D should be read to foreclose this court's mandamus jurisdiction. [00:19:19] Speaker 04: You know, there are statutes that specifically preclude or where Congress has indicated an intent to preclude all review, even through a mandamus action. [00:19:29] Speaker 04: But we don't think 314B is one of them. [00:19:31] Speaker 04: So we think it precludes appeals, which is what the court has before it here, and the sort of normal appellate review of statutory constitutional claims. [00:19:42] Speaker 04: But we do think that this court has the authority to issue a writ of mandamus if it thought that there were [00:19:48] Speaker 04: a constitutional violation made in the course of a non-institution decision. [00:19:53] Speaker 04: So I think the hypothetical that Mr. Shaw posited was something like a race-based decision declining to institute. [00:20:03] Speaker 04: We do think that would be within this court's mandamus power to address. [00:20:08] Speaker 04: So I suppose that goes. [00:20:11] Speaker 06: No, no, thank you. [00:20:11] Speaker 06: Thank you, Ms. [00:20:12] Speaker 06: Patterson. [00:20:12] Speaker 06: That definitely answered my question. [00:20:14] Speaker 06: I have another question, though. [00:20:16] Speaker 06: You said that 314 precludes any appeals of constitutional challenges, but doesn't preclude mandamus. [00:20:23] Speaker 06: How do you reconcile that with QOZO, SAS, and Click to Call, which, despite 314, opened the door to constitutional challenges via the 319 final written decision? [00:20:35] Speaker 06: So 314, at least by the Supreme Court, has not been decided to preclude constitutional challenges, even in a direct appeal of that nature. [00:20:44] Speaker 06: How do you distinguish that? [00:20:48] Speaker 04: I think because of the existence of 319 and a final written decision, [00:20:52] Speaker 04: both in those decisions themselves, of course, as discussed earlier, those were appeals from a final written decision under 318A. [00:21:01] Speaker 04: But also the actual quote from QOZO that that passage talks about what type of review would be available if in a final written decision, the PTO were actually to cancel your patent based on a constitutionally defective process or a [00:21:20] Speaker 04: or sort of wildly outside the bounds of its statutory authority, referred to as a shenanigan. [00:21:27] Speaker 04: I don't think the court in any way suggested that there's sort of a free-floating appeal right from a non-institution decision. [00:21:36] Speaker 04: In fact, that was what all members of the court were sort of in agreement on. [00:21:40] Speaker 04: That was the easy case under 314-D, is that a non-institution decision [00:21:46] Speaker 04: was just non-appealable. [00:21:48] Speaker 04: And Justice Alito in dissent, of course, he would have recorded a narrower reading to 314D than the majority would have. [00:21:55] Speaker 04: But even he thought that a non-institution decision, as Mr. Shaw quoted earlier, was the case where there simply was no appellate review. [00:22:03] Speaker 04: Now, as indicated in the court's argument order and as we've discussed, we don't think that forecloses the court's palace issue. [00:22:11] Speaker 04: of mandamus in extraordinary circumstances. [00:22:15] Speaker 04: We do think they would need to be extraordinary and that the usual high mandamus standards would apply, but we're not here to say that there's no vehicle by which this court could review tolerable constitutional challenges to a non-institution decision. [00:22:30] Speaker 04: I can turn to the court's second question, which is whether or not it should construe [00:22:39] Speaker 04: the appeal in front of it as a, as a petition for a written end amiss. [00:22:44] Speaker 04: Um, the government does not think that would be the, uh, uh, the good exercise of the court's discretion. [00:22:51] Speaker 04: We don't doubt that the court has the authority to do that. [00:22:54] Speaker 04: I think something similar happened in the GTNX case, but we think the better course would be to only take that step when a party has actually asked for it. [00:23:04] Speaker 04: And of course, in its opposition to the motion to dismiss here, [00:23:08] Speaker 04: didn't ask for it. [00:23:09] Speaker 04: I don't know if they will ask for it in oral argument, but we think that a party should at least affirmatively seek, if only in the alternative, the extraordinary relief of mandamus before the court goes on to consider it. [00:23:24] Speaker 06: If they do seek it in oral argument, given that you recognize their notice of appeal did [00:23:31] Speaker 06: mention it so that it wouldn't be outside the bounds of propriety. [00:23:35] Speaker 06: And we have at least one other case in which we treated a similar notice of appeal and then went ahead and considered it as a petition. [00:23:41] Speaker 06: I understand your point about why we ought not to in this case. [00:23:45] Speaker 06: But assuming that the Milan attorney isn't a complete fool and stands up and asks for a petition in the next, say, 15 minutes, how do you think we ought to resolve such a petition? [00:23:59] Speaker 04: First, we would, you know, stand by our position that it would be more appropriate to not accede to that late-breaking request. [00:24:07] Speaker 04: Second, if the court disagreed with us and decided to construe this petition for a writ of mandamus, we think the court could, as it has in multiple other cases where parties have actually, of course, requested mandamus relief, simply deny it. [00:24:21] Speaker 04: We agree with Jansen that there is no colorable constitutional claim here. [00:24:26] Speaker 04: We think that the type of complaints about how the agency has been exercising its unfettered discretion under 314A don't come any, nowhere near close to the type of flagrant violation that the Supreme Court referred to in quote though. [00:24:45] Speaker 04: Or just under the general mandamus standard, the fact that you don't like how an agency is exercising its discretion is certainly no basis for the exercise of an extraordinary writ. [00:24:55] Speaker 06: Ms. [00:24:56] Speaker 06: Patterson, so I certainly agree with you on what you just said about the agency's exercise of discretion has got to be outside the bounds of what's considerable under mandamus. [00:25:06] Speaker 06: But just out of curiosity, do you think mandamus relief of the sort that we're describing would be limited to the shenanigans and or flagrant constitutional violations that were carved out in CLOSO [00:25:21] Speaker 06: Or do you think that petitioners could seek mandamus relief for any, could seek it, and we would have jurisdiction to consider it for any thing they think rises to an extraordinary petition? [00:25:40] Speaker 06: I guess what I'm trying to ask, not very artfully, is do you believe that the right to seek relief through mandamus for non-institution decisions is cabined in the same way that QOZO cabins [00:25:51] Speaker 06: what you could seek through a direct appeal of a final written decision, what you could challenge, or do you think the right to seek mandamus relief is broader than that? [00:26:04] Speaker 04: Let me come at it this way, and tell me if this is responsive. [00:26:10] Speaker 04: We don't think that mandamus is sort of limited to strictly colorable constitutional claims. [00:26:17] Speaker 04: In other areas, sort of [00:26:20] Speaker 04: something else happened during an IPR that a party thought there was a case for mandamus, if that thing were statutory, we're not saying that there's somehow a bar to considering that statutory claim on mandamus. [00:26:35] Speaker 04: In the particular context of a non-institution decision, because 314A has no [00:26:43] Speaker 04: have no law, as Closa said, there is no mandate to review it. [00:26:46] Speaker 04: It's committed to agency discretion under 701A2, which is a very high bar. [00:26:51] Speaker 04: And by definition, what that means is that there's no law to apply, right? [00:26:56] Speaker 04: It's entirely within the agency's unfettered discretion to deny. [00:27:01] Speaker 04: So it's very hard for me to imagine with this particular type of agency action being reviewed through mandamus, how a party could ever assert a statutory violation that would [00:27:13] Speaker 04: that would make out a case for mandamus relief. [00:27:17] Speaker 04: Now, I think you can more clearly posit sort of an extraordinary situation involving consideration of constitutionally impermissible factors, right? [00:27:26] Speaker 04: Not that the agency would ever do that, of course, but if you had a claim that the agency denied your IPR because the patent was owned by [00:27:38] Speaker 04: It had a female patent owner, and there was a policy of promoting female entrepreneurship, right? [00:27:44] Speaker 04: These are all sort of hypotheticals wildly outside of what's ever happened. [00:27:48] Speaker 04: But if they were ever to occur, it's much easier to sort of invent the scenario in a non-institution context that exceeds constitutional bounds. [00:27:59] Speaker 04: But it's hard to see to invent one that exceeds statutory bounds since those bounds just don't exist. [00:28:04] Speaker 06: Ms. [00:28:05] Speaker 06: Patterson, not a question, but I absolutely enjoy your hypothetical, given the constitution of the panel and the fact that you happen to also be a woman. [00:28:16] Speaker 06: So, thank you. [00:28:18] Speaker 06: That was a good choice. [00:28:21] Speaker 05: Council, this is Judge Stoll. [00:28:23] Speaker 05: I just want to follow up on your answer on one point. [00:28:26] Speaker 05: I understood you to be saying that you couldn't imagine a scenario that wouldn't involve either shenanigans or a constitutional violation that would, a flagrant constitutional violation that would cause us to grant mandamus relief. [00:28:42] Speaker 05: But I want to make sure that I'm understanding your answer. [00:28:46] Speaker 05: I think the question is, [00:28:47] Speaker 05: when can we consider whether to grant mandamus relief, which is very different than granting mandamus relief, given the high standard for mandamus relief. [00:28:57] Speaker 05: So I want to re-ask Judge Moore's question with that clarification in mind, which is that when are we allowed to consider whether, when do we have jurisdiction to consider a petition for writ of mandamus if it doesn't fall in the category of either shenanigans or a flagrant constitutional violation? [00:29:17] Speaker 04: I see, Your Honor. [00:29:18] Speaker 04: I don't think there's some sort of jurisdictional limit where the court should just turn away a mandamus petition or not allow a mandamus petition to be filed simply because it doesn't fall within one of the quozobounds. [00:29:35] Speaker 04: Now, of course, once filed, I think the court could and should deny it out of hand. [00:29:42] Speaker 04: Of course, FRAP 21 permits courts to simply deny mandamus petitions. [00:29:47] Speaker 04: without calling for a response. [00:29:49] Speaker 04: And so I think unless there were the sort of allegation, if what we're talking about is a non-institution decision and someone has filed a petition for a writ of mandamus saying, you denied my IPR petition unconstitutionally or in flagrant violation of a statute, [00:30:10] Speaker 04: I think the court would have jurisdiction to consider the mandamus petition. [00:30:14] Speaker 04: It's just hard for me to imagine a scenario involving a statutory allegation that could even possibly give rise to an exercise of mandamus in this context. [00:30:25] Speaker 04: Ms. [00:30:25] Speaker 06: Patterson, this is Judge Moore. [00:30:26] Speaker 06: Can I follow up on that? [00:30:28] Speaker 06: I understood you to say that our jurisdiction was not bounded. [00:30:33] Speaker 06: So basically someone could file a mandamus petition [00:30:36] Speaker 06: for any reason at all, no matter how stupid and frivolous. [00:30:40] Speaker 06: And we wouldn't say we can't review it for lack of jurisdiction. [00:30:44] Speaker 06: We would just be able to deny those without even seeking a response. [00:30:48] Speaker 06: So you're not worried about opening a floodgate of every single person mandamusing their non-institution decision because you're hoping that we would, you know, wisely put an end to that with just [00:31:02] Speaker 06: clear denials and maybe even an opinion in this case that makes it clear the very, very, very narrow circumstances in which such a mandamus would ever be warranted, right? [00:31:12] Speaker 06: Is that about right? [00:31:13] Speaker 06: Does that sum it up? [00:31:15] Speaker 04: I think it does, Your Honor. [00:31:16] Speaker 04: I think that's about right. [00:31:17] Speaker 04: The mandamus statute, 1651, the theory on which disappointed petitioners would be filing directly in this court [00:31:28] Speaker 04: in the first place is that it would be in aid of its future jurisdiction. [00:31:33] Speaker 04: This is the same theory on which, you know, when there's an allegation that agency action has been unlawfully delayed or withheld, you know, often referred to as track suits, right, after the DC Circuit case. [00:31:45] Speaker 04: You know, it's not that there's an agency action over which the, you know, Court of Appeals presently has jurisdiction. [00:31:52] Speaker 04: The whole point is that you could issue a writ of mandamus [00:31:56] Speaker 04: in aid of potential future jurisdiction once that agency action issued. [00:32:00] Speaker 04: And since the Federal Circuit is the only court that has jurisdiction to consider anything to do with interparties review, you know, we think that, you know, it could act in aid of its jurisdiction over those matters by entertaining Petition Forbids and Mandamus. [00:32:17] Speaker 04: As you note, of course, the court, you know, could and we think should, [00:32:22] Speaker 04: deny those petitions, if you got a flood of them, sort of essentially trying to turn this avenue into an appeal route, which Congress has foreclosed. [00:32:32] Speaker 04: As this court explained in power integrations, that would be inappropriate. [00:32:36] Speaker 04: And I hope that parties would not take advantage of it in that way. [00:32:39] Speaker 04: And I have no doubt that this court would deal with it if they did. [00:32:43] Speaker 01: Well, let me just follow up a bit on that, Judge Newman, because it takes us back to really the foundation [00:32:52] Speaker 01: of the American Vents Act, and the concerns that are just rampant over the 10 years that that statute was being debated in Congress, and the primary concern was the possibility for abuse. [00:33:13] Speaker 01: in the implementation of what was being proposed, which was some way of putting the patent back in the office where it would get expert review on, again, perhaps a more objective standard, less encumbered by tradition. [00:33:30] Speaker 01: And so here we have, I think that, [00:33:35] Speaker 01: Some applicant that has an interest in delaying the applicability, the availability of an adverse patent will seek opportunities for such delay and not file a mandamus petition that on its face is ludicrous or whatever else but with a certain amount of color to it which will put it into the system of evaluation and objectivity. [00:34:05] Speaker 01: And so what shines through the legislative history and through the record was the congressional and as well as the popular intent not to open the door to fresh abuses that would outweigh or at least balance the advantages of what was being proposed. [00:34:28] Speaker 01: So I saw your answer to Joseph's question in this context, but is this something that the office is or should be concerned about? [00:34:41] Speaker 04: I'm not sure what the concern in front of the USPTO is that you're positing. [00:34:51] Speaker 04: I think certainly the agency is concerned with providing efficient and fair proceedings, of course, [00:34:58] Speaker 04: at issue in this case is the PTO's efforts to make sure that there are not duplicative or inefficient PTO PTAB proceedings going while district court litigation is proceeding. [00:35:14] Speaker 04: So to the extent you're asking whether or not PTO is balancing many of the statutory policies and underlying goals as it exercises its discretion, the answer is absolutely yes. [00:35:29] Speaker 04: I hear that I am out of time. [00:35:31] Speaker 04: I'm happy to answer any further questions the panel has. [00:35:35] Speaker 06: Ms. [00:35:35] Speaker 06: Patterson, could I ask you, there's one thing we haven't addressed at all, but it is the subject of a lot of the argument in the Janssen briefing. [00:35:49] Speaker 06: And I want to give you a chance, because you don't really have rebuttal time. [00:35:52] Speaker 06: So it's the 1295A4 argument. [00:35:56] Speaker 06: Namely, Janssen suggests that under 1295A4, we somehow have a direct appeal review over non-institution decisions potentially. [00:36:09] Speaker 06: Would you take a second and just address 1295A4 first before you sit down? [00:36:15] Speaker 04: Of course, Your Honor. [00:36:16] Speaker 04: I think that contention is squarely refuted by both the St. [00:36:21] Speaker 04: Jude and the Arthrex decision on which Janssen is relying. [00:36:25] Speaker 04: You know, Janssen suggests that Arthrex was designed to make 1295A4A an avenue to appeal non-institution decisions. [00:36:37] Speaker 04: Of course, Arthrex says exactly the opposite. [00:36:39] Speaker 04: There was a very different type of PTO decision at issue in Arthrex. [00:36:44] Speaker 04: It was a final adverse judgment. [00:36:46] Speaker 04: And Arthrex was careful because, of course, St. [00:36:48] Speaker 04: Jude was already on the books saying you cannot rely on 1295A4A [00:36:53] Speaker 04: for jurisdiction to appeal a non-institution decision. [00:36:57] Speaker 04: So, Arthrex was careful to say that is, you know, that's true of non-institution decisions. [00:37:03] Speaker 04: We just don't think St. [00:37:04] Speaker 04: Jude was squarely addressing this very different type of agency decision we have before us. [00:37:10] Speaker 04: So, you know, I suppose there could be questions about what 1295A4A [00:37:17] Speaker 04: does provide jurisdiction over for decisions other than on institution decisions. [00:37:21] Speaker 04: But the one thing we know for sure, it does not sort of have a standalone jurisdictional review right over is the very type of decision the court has before it now. [00:37:31] Speaker 04: And I don't think the court needs to go any farther beyond that in disposing of this appeal. [00:37:37] Speaker 06: Could I ask you to just put St. [00:37:40] Speaker 06: Jude to the side for a second? [00:37:42] Speaker 06: I understand that it is, in fact, precedent [00:37:45] Speaker 06: that we are bound by. [00:37:46] Speaker 06: But imagine a world in which St. [00:37:48] Speaker 06: Jude isn't written quite as broadly as it is to say that 1295A4 is limited to final written decisions. [00:37:58] Speaker 06: When you look at the statute itself, is there a reason to think non-institution decisions wouldn't be within the purview of 1295? [00:38:07] Speaker 04: Yes, Your Honor. [00:38:11] Speaker 04: There are multiple reasons. [00:38:12] Speaker 04: And of course, the statute itself is what St. [00:38:14] Speaker 04: Jude [00:38:15] Speaker 04: you know, based on. [00:38:16] Speaker 04: And so, but even apart from its precedential effect, you know, of course, I would start with 314B, which says that decisions whether to institute are final and non-appealable. [00:38:25] Speaker 04: So, therefore, sort of that's a clear and direct congressional expression of its intent that the, you know, appeal rights. [00:38:34] Speaker 06: Ms. [00:38:34] Speaker 06: Patterson, so would you suggest that even if 1295A4 were ambiguous as to [00:38:40] Speaker 06: whether a non-institution decision is like akin to a motion to dismiss sort of thing. [00:38:45] Speaker 06: So even if there was some ambiguity in 1295A4, that 314 has the more specific and clear guidance which trumps the more general potential statement in 1295A4. [00:38:59] Speaker 06: Is that a fair assessment of your argument? [00:39:03] Speaker 04: I think so, Your Honor, and particularly because, of course, in close though, the Supreme Court, looking at 314B, found clear and convincing evidence that Congress did not intend to permit review of institution decisions. [00:39:18] Speaker 04: And so, you know, where we have both the specific, as you said, subject matter, right, institution decisions, and we already have the Supreme Court telling us that we have clear congressional intent to preclude review, [00:39:31] Speaker 04: I don't think there's any question that sort of 1295 is a back door around those holdings. [00:39:37] Speaker 04: I would further note, just looking at the statute as you asked me to, of course, Congress is very specific about the type of IPR decision that it was providing, you know, appeal over. [00:39:48] Speaker 04: And that's a final written decision with respect to patentability under 318A. [00:39:53] Speaker 04: And so, you know, we think particularly in combination with 314B, Congress was pretty clearly trying to [00:40:01] Speaker 04: make sure that there wasn't a pilot jurisdiction over the outcome of sort of stage one, the institution process. [00:40:13] Speaker 06: Thank you, Ms. [00:40:14] Speaker 06: Patterson. [00:40:15] Speaker 06: Thank you, Your Honor. [00:40:16] Speaker 06: If there are no further questions, then why don't we hear from the attorney for Janssen? [00:40:22] Speaker 03: No. [00:40:26] Speaker 03: Your Honor, this is Deepa Mukherjee from Mylan. [00:40:30] Speaker 03: Did you mean to ask Mr. Shah to speak again, or would it be appropriate for me? [00:40:37] Speaker 06: No, I got your parties mixed up. [00:40:39] Speaker 06: Please proceed. [00:40:41] Speaker 03: No, absolutely. [00:40:42] Speaker 03: And thank you, Your Honors. [00:40:43] Speaker 03: And again, Deepa Mukherjee for Appellant Mylan. [00:40:48] Speaker 03: Your Honor, perhaps the best place for me to start in line of discussions that we've been having is that when we view Jason's presentation and the government's presentation, I think the unified theme in both is that both advocate for a ruling that the 314D appellate bar is limitless. [00:41:07] Speaker 03: And to take the government's side of it in particular, when we also consider the positions that the government has taken in certain copending APA actions, [00:41:18] Speaker 03: Really where the outcome comes out is that there is no exception to the 314D bar. [00:41:27] Speaker 03: The 314D bar is absolute. [00:41:30] Speaker 03: And that simply cannot be. [00:41:32] Speaker 03: And if I may, Your Honor, I think it goes directly to the inquiries that the court posited to the parties in its January 29th order. [00:41:41] Speaker 03: because binding decisions like Clouzot, and I know we spoke about Clouzot a lot, but also SAS left open that the appellate bar does not extend to circumstances where there are constitutional violations or allegations that the agency acted outside of its statutory limits. [00:42:00] Speaker 03: And obviously, the appeal that is before you at present alleges both. [00:42:06] Speaker 03: Now, that's what we have here. [00:42:10] Speaker 05: We have both of those sides. [00:42:12] Speaker 05: Mr. Mukherjee, this is Judge Stoll. [00:42:14] Speaker 05: I understand what you're saying, and I think both the government has suggested that there in fact is an exception where there's [00:42:26] Speaker 05: a constitutional violation or, you know, shenanigans where you could seek a petition for written mandamus. [00:42:37] Speaker 05: And I think the government even concedes that we would have jurisdiction to consider a petition for written mandamus, even where it doesn't rise to that level. [00:42:48] Speaker 05: Let me ask you this, though. [00:42:49] Speaker 05: I really want to talk about your due process claims. [00:42:52] Speaker 05: I'm having a hard time seeing it as a colorable due process claim. [00:42:56] Speaker 05: So I'd like you to discuss with me the nature of your due process claim. [00:43:02] Speaker 03: Sure. [00:43:03] Speaker 03: So let me just very quickly address one aspect of the claim itself, which I'm sure the court recognizes. [00:43:11] Speaker 03: that much like the Apple and Cisco decisions, we do believe that the promulgation of the NHK-FINTA factors through this ad hoc litigation as opposed to formal rulemaking under 316 is certainly a violation and that it also truncates the one-year, you know, timeframe that Congress had given with respect to the filing an IPR. [00:43:38] Speaker 03: But bringing it to the constitutional violation itself, Judge Stoll, in the application of the NHK Fint of Factors that the board did in connection with Mylands IPR, there is almost, there is certainly primary, if not in some instances, almost solitary reliance on the TEVA litigation, particularly when it came out to the Fint of Factors numbers two and number three. [00:44:05] Speaker 03: What does that mean? [00:44:07] Speaker 03: When the PTAB is considering a third-party litigation whereby I have no rights, no control whatsoever over, and that litigation is the primary driving force for why the current IPR was denied, that is a due process violation. [00:44:29] Speaker 05: There is also... What exactly is the property right that you're being denied? [00:44:35] Speaker 03: Well, Your Honor, I'm not sure that a due process violation necessarily must mandate an actual deprivation of property. [00:44:44] Speaker 03: We have access to the IPR route. [00:44:49] Speaker 03: No one is saying Mylan is guaranteed the right to an IPR being instituted. [00:44:56] Speaker 03: But we do have this pathway available to us. [00:45:00] Speaker 03: And when that pathway is taken away from us, [00:45:03] Speaker 03: based on a third-party litigation, again, from a competitor, and its primary reliances on that particular litigation, that's the deprivation, because I have never been able to... I have no control... Council, this is just more... Did you answer Judge Stowell's question by suggesting that you don't believe that you have to have any sort of property right in order to have a due process violation, and if so, [00:45:28] Speaker 06: What line of cases are you relying on? [00:45:31] Speaker 06: Are you saying there's a substantive due process issue here? [00:45:34] Speaker 06: I don't understand where you're going. [00:45:36] Speaker 03: Yeah, that's a good point Judge Moore. [00:45:38] Speaker 03: And there is a substantive due process problem here when we are denied access or even a fair shake to the IPR pathway based upon a third party litigation to which I have no control. [00:45:52] Speaker 03: We had no say in the way that case proceeded. [00:45:57] Speaker 03: We have no say. [00:45:58] Speaker 03: We had no say in the trial, obviously. [00:46:00] Speaker 03: Do you have case law? [00:46:01] Speaker 05: This is Judge Stoll again. [00:46:03] Speaker 05: I would love to hear about any cases you have that could help me understand why this provides a due process claim. [00:46:13] Speaker 03: Truthfully, Your Honor, I'm happy to kind of get back to you on that, but I do feel like this is in some ways a case of first impression. [00:46:21] Speaker 03: And if we might, let's step back for a moment too about our industry as a whole. [00:46:26] Speaker 03: I mean, this court is all too familiar about the Hatch-Waxman construct. [00:46:30] Speaker 03: The way this particular decision has come down, it effectively stands for the proposition that any subsequent late filer effectively doesn't have the IPR route available to it anymore. [00:46:42] Speaker 03: Because if there's a first filer litigation out there that is in far advanced stages of litigation, that's it. [00:46:48] Speaker 03: So a statutorily enacted pathway is taken away. [00:46:55] Speaker 06: Is that what the PTO said, or did the PTO balance a lot of different factors, including your own litigation, and on the balance of all those factors, conclude that it didn't make sense to spend administrative resources at the same time as all of that litigation was ongoing? [00:47:16] Speaker 06: Or did the PTO really [00:47:18] Speaker 06: render a decision in this case to suggest that the second filer is always out of luck on IPRs? [00:47:26] Speaker 03: I do not believe that the PTO said that in connection with that decision. [00:47:31] Speaker 05: This is Judge Stoll. [00:47:34] Speaker 05: When I read the board's decision, they mentioned and discussed [00:47:40] Speaker 05: not just the TEVA litigation, but also the MyLand litigation in each of their discussions of fintive factors one through five. [00:47:48] Speaker 05: Isn't that right? [00:47:49] Speaker 03: There is lip service given to the MyLand litigation. [00:47:54] Speaker 03: Judge Still, you're absolutely right. [00:47:55] Speaker 05: I'm sure there's a lip service. [00:47:58] Speaker 03: I do believe to the greatest extent it was lip service. [00:48:03] Speaker 03: Because the analysis, if we look at the decision closely, does focus primarily on the TEVA litigation. [00:48:10] Speaker 03: In fact, I believe the TEVA trial was mentioned five times. [00:48:17] Speaker 03: Whereas in the Mylan case, we still to this day do not have a trial date. [00:48:23] Speaker 03: And the PTAP did suppose that we would be going to trial in the summer of this year. [00:48:28] Speaker 03: that obviously hasn't happened. [00:48:29] Speaker 03: So I take your point. [00:48:33] Speaker 05: I mean, they do. [00:48:34] Speaker 05: They made a reasonable assumption that the trial date would be set in summer of 2021 as requested by both parties, right? [00:48:43] Speaker 03: As of right now, we honestly do not know when trial will occur. [00:48:50] Speaker 03: And again, the decision itself, and I take your point, Jess, still, but the decision itself [00:48:56] Speaker 03: is primarily based on the TEVA litigation. [00:49:00] Speaker 03: And that is an inherent problem. [00:49:03] Speaker 03: And going back to, I think, the point that you were also making. [00:49:06] Speaker 06: Council, why is it an inherent problem? [00:49:09] Speaker 06: The Congress gave the PTO unfettered discretion to decide when not to institute. [00:49:16] Speaker 06: For example, IPRs are really expensive. [00:49:19] Speaker 06: They clearly take the agency a lot more time than do normal patent applications. [00:49:25] Speaker 06: Couldn't the agency under the statute conclude the backlog of patent applications has gotten too big and we need to focus our resources on the applications and not maybe they issue a rule. [00:49:37] Speaker 06: We will not accept more than 500 IPR petitions a year or we will not grant more than 50 a year because we simply don't have the resources and we need to focus on these other things. [00:49:49] Speaker 06: Isn't all of that within the agency's discretion in light of the statute? [00:49:54] Speaker 06: They could make a decision that we're just not going to grant more than 50 of these. [00:50:00] Speaker 03: If the agency promulgated a rule like that through notice and comment in keeping with section 316, then of course the agency is able to do that. [00:50:09] Speaker 03: I think that does go to what the Apple Cisco line of cases are dealing with right now for which there may be a rehearing. [00:50:17] Speaker 03: But to go back to the issue here, does the agency have the unfettered discretion to just simply deny the IPR based on a third party litigation that I have no control over and I'm not a party to? [00:50:32] Speaker 03: That I do believe raises a significant constitutional issue. [00:50:37] Speaker 03: And under COSO and certainly SAS, the 314D bar, [00:50:43] Speaker 03: doesn't encompass. [00:50:45] Speaker 06: Why does it raise a constitutional issue? [00:50:47] Speaker 06: You're not bound by it in any way. [00:50:51] Speaker 03: The IPR pathway, Your Honor, is gone from me. [00:50:56] Speaker 03: And I believe that you made a very good point during Mr. Shah's presentation, too, is that there is also a different evidentiary standard. [00:51:07] Speaker 03: And so if my ability to prosecute these patents [00:51:13] Speaker 03: under the preponderance of the evidence standard is taken away from the fact that a third party of litigation is about to go to trial and where that goes, I do not believe that the PTAB has that level of discretion. [00:51:29] Speaker 06: Because I believe that... I understand that I made a good point. [00:51:32] Speaker 06: Did you make that point in your brief? [00:51:33] Speaker 06: Did you say we are deprived of due process by virtue of having a different standard applied to us? [00:51:41] Speaker 03: I do not believe that that particular point was there. [00:51:44] Speaker 03: Obviously, Your Honor, the due process deprivation is replete throughout the entirety of the brief. [00:51:52] Speaker 06: But under the doctrine of constitutional avoidance, ought I to be the one making your due process arguments, or should I be limited to the ones you actually raised? [00:52:02] Speaker 03: Fair enough. [00:52:03] Speaker 03: And they should be limited to the ones that we have raised. [00:52:07] Speaker 03: And I am fine with that. [00:52:10] Speaker 06: Just any curiosity. [00:52:12] Speaker 06: We are so many minutes into your argument. [00:52:15] Speaker 06: Out of curiosity, are you intending to request mandamus relief at any point? [00:52:19] Speaker 06: I just want to get a clear answer to that. [00:52:23] Speaker 03: So, Your Honor, I think we all know that in order to even go the mandamus pathway, we have to first clear the 314 bar. [00:52:31] Speaker 03: And certainly cases like GTNX allow... That's not correct. [00:52:35] Speaker 06: Council, that's not correct. [00:52:37] Speaker 06: Did you listen to the rest of the argument? [00:52:39] Speaker 06: Both of the other lawyers before you suggested that mandamus would not be limited by the 314 bar. [00:52:46] Speaker 06: So we don't all know and agree to that. [00:52:49] Speaker 06: In fact, I think nobody agrees with it except for you. [00:52:52] Speaker 06: So what, I guess, just answer my question. [00:52:57] Speaker 06: Are you requesting mandamus relief or not? [00:53:00] Speaker 03: Under GTNX, I believe that your honors can treat this petition as a mandamus request. [00:53:08] Speaker 03: I would say, though, since we are outside of the 314 bar, and we can talk about that further, but that the direct appeal route through 1295A is the best route. [00:53:23] Speaker 06: I am baffled. [00:53:24] Speaker 06: Do you appreciate that mandamus can be sought orally in oral argument? [00:53:28] Speaker 06: Do you appreciate that? [00:53:31] Speaker 03: Yes, Your Honor, I do. [00:53:32] Speaker 06: And yet you said, I could treat your notice of appeal as a request for mandamus. [00:53:39] Speaker 06: You know what? [00:53:39] Speaker 06: You could also say, treat this statement as a request for mandamus. [00:53:43] Speaker 06: Are you doing that today? [00:53:44] Speaker 03: Understood, Your Honor, and yes. [00:53:47] Speaker 03: And we are formally requesting that then this may also be considered as a mandamus. [00:54:00] Speaker 03: with your honors indulgence, if we could just talk about the jurisdiction under 1295. [00:54:06] Speaker 03: Because once we're outside of 314, that's where we believe that no matter what, this court does have jurisdiction under 1295A4A. [00:54:16] Speaker 03: And we are cognizant of the decisions, but even in Arthrex, I think it was fairly clear that sections like 318 and 319 don't necessarily cabin 1295A4A jurisdiction. [00:54:30] Speaker 03: And that's the situation that we are in right now. [00:54:34] Speaker 03: So I think one thing that in Janssen's briefing certainly is there is an implication that 1295 and 319 are almost synonymous. [00:54:44] Speaker 03: That 1295 in this type of a context is reserved for only final written decisions. [00:54:50] Speaker 03: And if just looking at Arthrex as an example of where you have pre-institution, albeit an adverse judgment, but that is something that's outside [00:55:00] Speaker 03: And the same is said on PGS, which, as your honors know, involved both a final written decision and non-institution decision. [00:55:13] Speaker 03: And the inquiry came down to, well, is there finality? [00:55:18] Speaker 03: If we are outside of the 314 D bar, and I believe we are, then the question really becomes, is there finality? [00:55:28] Speaker 03: And under that scenario, where the 314D bar is inapplicable, then there is finality. [00:55:35] Speaker 03: Because it is not interlocutory. [00:55:38] Speaker 03: The IPR itself is done. [00:55:41] Speaker 03: So in that context, the non-institution would, in fact, fix it. [00:55:50] Speaker 03: Your Honor, I believe that was the sound for my time. [00:55:54] Speaker 06: If you have anything further, you definitely can go ahead, because we allowed the other lawyers to go on longer than their time. [00:56:02] Speaker 06: So if there's more that you want to say, please feel free. [00:56:05] Speaker 03: Thank you, Your Honor. [00:56:08] Speaker 03: No, then I will be fairly brief. [00:56:10] Speaker 03: But I do want to perhaps end where we were discussing this right from the beginning. [00:56:15] Speaker 03: I do believe that both Janssen and the government are advocating for a rule that 314 is, in fact, limitless. [00:56:23] Speaker 03: Because if you certainly take the government's position, there is hardly anything that could ever be appealed. [00:56:29] Speaker 03: It is unfettered. [00:56:31] Speaker 03: And that is the issue in light of certainly Supreme Court precedent and status. [00:56:36] Speaker 03: Now, as to the particular constitutional claim, Your Honors, again, I would submit that that does go to merits. [00:56:43] Speaker 03: That goes to a merits briefing on the constitutional claim itself. [00:56:47] Speaker 03: But there is a constitutional issue here, and that does take us outside of the 314D bar. [00:56:54] Speaker 03: And once that happens, then this court should have jurisdiction under 1295. [00:57:04] Speaker 06: How do you reconcile that with the very broad language in the St. [00:57:08] Speaker 06: Jude's decision? [00:57:11] Speaker 03: Well, again, so, Your Honor, in St. [00:57:14] Speaker 03: Jude, the 314B bar was applicable because if memory serves, in St. [00:57:19] Speaker 03: Jude, the issue was one of Section 315, dealing with the one-year time frame. [00:57:26] Speaker 03: Even cases like Thrive, you know, that came later on from the Supreme Court, make it clear that that is, of course, under the 314 bar, that the director, of course, has wide discretion when it comes to that. [00:57:40] Speaker 03: And that is perhaps the one thing that we haven't discussed or at least I haven't been able to express is that no one is suggesting that the bar is not fulsome. [00:57:52] Speaker 03: No one is suggesting that the director does not have a great deal of discretion. [00:57:58] Speaker 03: SAS goes into the exceptions to that, but Thrive categorically sets forth those categories where the discretion is absolute and complete. [00:58:09] Speaker 03: And so in the vast majority of situations, that bar is a bar, but not when a constitutional issue is implicated. [00:58:17] Speaker 01: Well, counsel, let me interrupt. [00:58:20] Speaker 01: Judge Newman, to focus on the constitutional issue, is the constitutional issue the right to challenge a patent with a more favorable burden of proof? [00:58:33] Speaker 01: Is this the constitutional issue in a nutshell? [00:58:38] Speaker 03: In a nutshell, Judge Newman, the constitutional issue is the deprivation of the IPR pathway by primary reliance on a third party litigation that we had no control over and no rights to. [00:58:56] Speaker 03: And in that way, we had ultimately no control over even getting access to the IPR. [00:59:05] Speaker 01: Well, I heard you say that, but it isn't that. [00:59:08] Speaker 01: standard that there is concurrent litigation, where does that leave you if there were no concurrent district court litigation involving another party? [00:59:21] Speaker 03: If there were no third party litigation such as the Teba litigation, Your Honor, we would not have a constitutional challenge before you. [00:59:33] Speaker 03: I think we would still embrace and side with [00:59:36] Speaker 03: Apple and Cisco with respect to the promulgation of the NHK Fint of Factors, but we would not have a constitutional challenge. [00:59:45] Speaker 01: That's quite a much more narrow and limited concept than what I had gleaned from this large, free-flowing question about for whatever reason one might raise a constitutional issue, discrimination or [01:00:06] Speaker 01: dramatic deprivations of due process. [01:00:12] Speaker 01: Your position is limited to whether there's concurrent litigation involving a third party? [01:00:20] Speaker 03: The primary basis of the constitutional issue, Your Honor, is the fact of the PTAB's reliance using the NHK Fint of Factors on a litigation to which we don't even participate in. [01:00:31] Speaker 03: And so as a result of that, that in and of itself was a deprivation. [01:00:36] Speaker 03: And I take all the discussion that we've had on various types of constitutional violations. [01:00:44] Speaker 03: That, of course, goes to merits. [01:00:47] Speaker 03: And neither SAS nor CUSO gave parameters or outlines necessarily that the only types of issues that are outside of 314 is if it's a race-based deprivation. [01:01:05] Speaker 03: It is a constitutional violation that is the inquiry and that determines whether or not the 314 bar applies. [01:01:20] Speaker 03: With that, Your Honor, again, absent other questions, I have no more. [01:01:27] Speaker 06: Okay. [01:01:28] Speaker 06: Thank you very much. [01:01:30] Speaker 06: Let's have, we have three minutes of rebuttal by Mr. Shaw. [01:01:34] Speaker 06: Please proceed. [01:01:35] Speaker 02: Thank you, Your Honors. [01:01:37] Speaker 02: I'd just like to make two brief points. [01:01:39] Speaker 02: First, even if there were some exception written into the 314D bar in this case, one still needs an affirmative basis of appellate jurisdiction. [01:01:51] Speaker 02: In Quozo, because it was a final written decision, there was a separate affirmative basis of appellate jurisdiction that allowed that even if you had the constitutional exception to the 314D appellate bar, it could go forward because it was a final written decision that could be appealed under Section 319, a separate affirmative appellate grant of jurisdiction. [01:02:13] Speaker 02: Here, if you had an exception to the 314D bar hypothetically for a denial of institution, [01:02:20] Speaker 02: there would still be no affirmative basis of jurisdiction. [01:02:24] Speaker 02: As has already been discussed here, 1295A4 doesn't cut it. [01:02:28] Speaker 02: As St. [01:02:29] Speaker 02: Jude is held and as the structure of the statute reveals, 1294A4 could not be read, fairly read, to construe and grant an affirmative appellate jurisdiction over a denial of institution. [01:02:44] Speaker 02: I think that's the critical difference between allowing [01:02:47] Speaker 02: a constitutional exception in the final written decision context because there is another affirmative grant that allows the court to hear it. [01:02:55] Speaker 02: This court doesn't have a free voting grant of discretion just to hear a case when there's an exception to an appeal bar. [01:03:02] Speaker 02: There still has to be an affirmative grant of jurisdiction. [01:03:04] Speaker 02: That's the first point. [01:03:05] Speaker 02: The second point, your honor, goes to the due process claim. [01:03:10] Speaker 02: Again, it has to be a colorable due process claim and every Supreme Court [01:03:14] Speaker 02: a case in which they've written in an exception for constitutional claims, it's been expressed that it has to be a colorable claim. [01:03:23] Speaker 02: Otherwise, people could simply utter magic words of due process. [01:03:28] Speaker 02: Yes, Your Honor. [01:03:29] Speaker 06: Judge Moore, slow down. [01:03:30] Speaker 06: I'm not going to hold you to your three minutes. [01:03:31] Speaker 06: And you're talking so fast, it's hard for me to listen that fast. [01:03:36] Speaker 02: I'm sorry, Your Honor. [01:03:37] Speaker 06: That's okay. [01:03:37] Speaker 06: But wait, no, no, I have a question. [01:03:39] Speaker 06: Hold on. [01:03:39] Speaker 02: Yes. [01:03:40] Speaker 06: So when you're saying there has to be a colorable due process challenge, [01:03:44] Speaker 06: You're sort of saying that under sort of the theoretical rubric of close those tasks and click the call, which allowed an exception to 314 in 319 for constitutional challenges. [01:03:58] Speaker 06: But your argument to me is there's no independent jurisdiction for any sort of challenge to [01:04:06] Speaker 06: a non-institution decision, even a constitutional one, right? [01:04:10] Speaker 06: So that it doesn't matter. [01:04:12] Speaker 06: I mean, putting mandamus aside, it doesn't even matter if it's a constitutional challenge, colorable or not. [01:04:20] Speaker 06: Your argument, as I understand it, doesn't go, isn't dependent on whether it's colorable because your view is even if colorable, there just isn't any direct route of appeal. [01:04:30] Speaker 06: Is that correct? [01:04:31] Speaker 02: Correct, Your Honor. [01:04:32] Speaker 02: Our primary submission would be that this court just doesn't have affirmative appellate jurisdiction of a non-institution decision, whatever the nature of the claim. [01:04:43] Speaker 02: However, if this court were to disagree with that and read in an exception for colorable constitutional claims, this one would fail. [01:04:55] Speaker 02: OK. [01:04:56] Speaker 06: And now, I get it. [01:04:57] Speaker 06: Right. [01:04:57] Speaker 06: We understand that argument. [01:04:58] Speaker 06: Now, let me ask another question. [01:05:00] Speaker 06: When it comes to mandamus, I know that you agree mandamus is a route available. [01:05:07] Speaker 06: And you heard Ms. [01:05:09] Speaker 06: Patterson explain that mandamus isn't bounded, for example, to only constitutional challenges or shenanigans. [01:05:18] Speaker 06: That mandamus would avail itself of a broader range of potential arguments granted under an extremely difficult standard to me. [01:05:28] Speaker 06: Do you agree with that argument, namely that mandamus could be sought for pretty much any reason? [01:05:34] Speaker 06: Now, I don't mean to suggest it's going to be granted for any reason. [01:05:38] Speaker 06: And of course, if it is sought willy-nilly, Judge, Ms. [01:05:42] Speaker 06: Patterson was correct that I'm sure our court would come down quite hard on such filings and award all kinds of costs and fees and other things if people get crazy about it. [01:05:53] Speaker 06: But do you agree with the basic proposition [01:05:56] Speaker 06: The basic proposition is that mandamus could be sought on theoretically any basis. [01:06:03] Speaker 02: Uh, yes, your honor. [01:06:04] Speaker 02: I agree with, with everything Ms. [01:06:05] Speaker 02: Patterson said about mandamus. [01:06:07] Speaker 02: Anyone can file a mandamus petition under the mandamus statute 28 USC 1651, but whether they meet the, as you mentioned, extraordinarily high criteria for mandamus relief is another question. [01:06:21] Speaker 02: And in the vast majority, [01:06:23] Speaker 02: of mandamus petitions that are filed that we've looked, you know, the vast, vast majority are simply one-word denials. [01:06:31] Speaker 06: Well, I understand. [01:06:33] Speaker 06: Back for one second. [01:06:35] Speaker 06: You said anyone could file on any reason, and just to be clear, and we would have jurisdiction to resolve that under the very high standard in every case, that there isn't an argument that we wouldn't have jurisdiction over deciding a mandamus petition. [01:06:52] Speaker 06: Is that correct? [01:06:53] Speaker 02: Your Honor, yes, I think you could look at the mandamus petition and exercise your discretion to deny it. [01:06:59] Speaker 02: Just to be fully, just to give you the full technical answer, there are some decisions that suggest what if a court finds that the mandamus criteria do not apply, then there is a lack of jurisdiction. [01:07:13] Speaker 02: Now it's sort of kind of the chicken and egg issue there. [01:07:17] Speaker 02: You still have to look at the criteria to determine whether they apply. [01:07:21] Speaker 02: And some courts have held that if the criteria don't apply, there is no jurisdiction. [01:07:25] Speaker 02: So in that sense, maybe you would say you didn't have jurisdiction. [01:07:28] Speaker 02: But I don't think as a practical matter, if I'm understanding your question, it would matter because you could look at the petition, decide whether it had any merit and deny it. [01:07:38] Speaker 02: It may be as a formal matter, that means you lack jurisdiction. [01:07:42] Speaker 02: but not to look at it. [01:07:43] Speaker 06: Just to be clear, you said you agree with the government. [01:07:45] Speaker 06: Do you also agree with the government to the extent that Ms. [01:07:49] Speaker 06: Patterson and the United States explained that jurisdiction for mandamus under these circumstances would flow through our ability to preserve our own future jurisdiction? [01:07:59] Speaker 06: That that's an independent basis for creating jurisdiction over such mandamus petitions is a court's ability to preserve its own future jurisdiction. [01:08:10] Speaker 02: Yes, Your Honor, mandamus is always under being understood to protect in aid of a court's jurisdiction. [01:08:15] Speaker 02: And so again, I think it would have [01:08:18] Speaker 02: you would have the ability to look at the mandamus claims and assess them. [01:08:22] Speaker 02: And again, here, for all the reasons we've talked about, we don't think you have to get beyond the one word deny where they have yet to identify a property right. [01:08:32] Speaker 02: And the due process clause, of course, itself says that deprivation of life, liberty, or property without due process of law, you don't have a property right here. [01:08:43] Speaker 02: And you don't have a substantive due process right, which would rewrite [01:08:47] Speaker 02: 200 years of constitutional law and having a special discretionary agency procedure that might have a more favorable standard of review. [01:08:57] Speaker 02: If there are no further questions, I'm happy to rest there. [01:09:01] Speaker 06: We thank all three counsel. [01:09:03] Speaker 06: It was an excellent argument, and it is great help to the court. [01:09:06] Speaker 06: So thank you very much. [01:09:09] Speaker 06: Thank you. [01:09:10] Speaker 06: That ends our proceeding. [01:09:13] Speaker 00: The honorable court is adjourned from day to day.