In re Schott Gemtron Corp.
Docket: No. 2015-133
Court: Court of Appeals for the Federal Circuit; August 11, 2015; Federal Appellate Court
Schott Gemtron Corporation petitioned the Director of the United States Patent and Trademark Office (PTO) to initiate inter partes review of U.S. Patent 8,286,561, owned by SSW Holding Company, Inc. The PTO granted the petition in part, allowing inter partes review on two out of nine grounds, while denying the remaining seven. Following the review, the PTO concluded on May 26, 2015, that Schott did not demonstrate that claims 1, 13, and 25 of the patent were unpatentable under 35 U.S.C. § 103. Schott appealed this decision, and the Federal Circuit affirmed the PTO's ruling in a summary decision. Schott subsequently sought a writ of mandamus from the Federal Circuit, requesting that the PTO be directed to grant inter partes review on the two denied grounds. The court denied this petition, referencing prior cases (St. Jude Medical and In re Dominion Dealer Solutions) that established 35 U.S.C. § 314(d) prohibits interlocutory review of PTO denials for inter partes review. The court emphasized that the denial of review on any ground is a discretionary decision that cannot be reviewed under any circumstances. Schott failed to meet the stringent requirements for mandamus, as the relief sought pertained to a discretionary decision by the PTO and did not demonstrate a clear right to relief. Consequently, Schott’s petition for a writ of mandamus was denied.