In re: MaxPower Semiconductor, Inc., Appeal No. 2021-146 (Fed. Cir. Sept. 8, 2021)

In its only precedential patent case this week, the Federal Circuit denied a mandamus petition relating to the PTAB’s institution of inter partes reviews of MaxPower’s patents. The case touches on, but does not completely resolve, whether the PTAB can institute inter partes reviews where the parties have agreed to arbitrate those disputes.

MaxPower had argued that the PTAB should decline review because the patentability dispute was subject to an arbitration agreement. The PTAB instituted review nonetheless. MaxPower sought mandamus from the Federal Circuit, suggesting that the collateral order doctrine warrants immediate review. The Federal Circuit rejected that argument, opining that “MaxPower can meaningfully raise its arbitration-related challenges after the Board’s final written decisions.”

MaxPower also argued that the Federal Circuit had jurisdiction under the Federal Arbitration Act, which allows immediate appeals from orders refusing to stay actions or refusing to compel arbitration. The Federal Circuit found that the PTAB’s order did not fit squarely into any of the classes of orders that are immediately appealable in the arbitration act. 

The Federal Circuit also held that MaxPower had failed to show that its mandamus petition was not merely “a means of avoiding the statutory prohibition on appellate review of agency institution decisions.” The Court further held that “MaxPower has not shown that the facts of this case support an exception to the nonappealability of institution decisions and unavailability of mandamus relief.” In what may be critical language cited going forward in similar cases, the Court held:

For example, the arguments raised by MaxPower do not show, under the demanding standards for mandamus, that the Board has clearly and indisputably exceeded its authority. The Board is not bound by the private contract between MaxPower and ROHM. And MaxPower fails to explain why 35 U.S.C. § 294 clearly deprives the Board of authority to institute inter partes review when the statute does not by its terms task the agency with enforcing private arbitration agreements.

Thus, the petition was denied. The opinion was less than three pages in length. However, Judge O’Malley issued a 17-page dissent, opining that ROHM should be bound by its arbitration agreements, and that mandamus was warranted.

A copy of the opinion can be found here.