Decision whether to institute inter partes review is not reviewable

St. Jude Medical, Cardiology Division, Inc., v. Volcano Corporation, (Fed. Cir. Apr. 24, 2014) (Prost, O'Malley, TARANTO) (PTO) (2 of 5 stars)

In re Dominion Dealer Solutions, LLC., __ F.3d __ (Fed. Cir. Apr. 24, 2014) (Prost, O'Malley, TARANTO) (PTO) (2 of 5 stars)

In re Procter & Gamble Company, (Fed. Cir. Apr. 24, 2014) (Lourie, Prost, TARANTO) (PTO) (2 of 5 stars)

St. Jude appealed the PTO Director's decision not to institute an inter partes review of a patent owned by Volcano. The appeal was dismissed, on Volcano and the Director's motion, because a noninstitution decision is barred from appeal under § 314(d).

Dominion's petition for a writ of mandamus directing the PTO to vacate the Director's noninstitution decision is barred under § 314(d). Citing the St. Jude decision, the court ruled that there is "no 'clear and indisputable' right to challenge a noninstitution decision directly in this court." Slip op. at 4.

P&G's petition for a writ of mandamus directing the PTO to withdraw the orders instituting inter partes review of P&G's patents is also barred under § 314(d). Additionally, the facts as presented "is not one of the rare situations in which irremediable interim harm can justify mandamus." Slip op.at 5.