About Face Responsive to Mandamus Filing

I’ve pointed out a few times now that the IPR filings of OpenSky are inevitably doomed. There is just too much evidence of bad faith for there to be any other outcome. And as I also pointed, out the POP request has been pending since January, presumably awaiting the new Director to settle the issue. Today the POP Request was finally denied, strangely, in favor of a Director Review.

I know what you are thinking. “Wait a minute, there is Director Review of institution decisions? Since when!?”

Since a mandamus petition sent the agency scrambling to fix this constitutional infirmity.

Since Arthrex, the agency has taken the position that requests for Director Review would not be accepted for institution decisions. Then a week or so back, the agency suddenly announced that the Director retains the authority to consider such institution issues sua sponte. That is, even thought there is no formal mechanism for parties to provide information to the Director, evidently, the Director has all encompassing knowledge of potential issues.

The recent about-face would seem somewhat of an odd development absent knowledge that the government’s brief on the mandamus dispute was also due to the Federal Circuit days after the announcement. Completely coincidentally (I’m sure) another week later the Director denies the OpenSky POP request to take it up in the first ever Director Review of an institution decision.

You can find the POP denial (here) and the Director Review statement of the same day (here)

What is it that moved this decision from the POP to the Director alone? According to the decision, the week-old policy.

I determine that Director review of the Board’s Institution Decision is appropriate because this case raises novel issues of law and policy, as well as issues of particular importance to the Office and the patent community. See Interim process for Director review (Question 10 (setting forth issues that may warrant Director review), Question 22 (providing for sua sponte Director review of institution decisions in AIA proceedings and explaining that “the parties to the proceeding will be given notice” if Director review is initiated sua sponte).

You might be thinking that the POP functions to consider the very same issues, and you’d be 100% right. But, the POP does not satisfy the Appointments Clause (as we know from Arthrex). And, when fighting off a mandamus filing at the Federal Circuit on the Appointments Clause, citing to an actual Director Review is far more valuable than a hand-waving policy of what the Director might do someday.

Just don’t expect to see too many more – if any.