  United States Court of Appeals
      for the Federal Circuit
                ______________________

   IN RE THE PROCTER & GAMBLE COMPANY,
                    Petitioner.
              ______________________

             Miscellaneous Docket No. 121
               ______________________

    On Petition for Writ of Mandamus to the United
States Patent and Trademark Office in Nos. IPR2013-
00438, IPR2013-00448, and IPR2013-00450.
                ______________________

    GREGORY A. CASTANIA, Jones Day, of Washington, DC,
for petitioner. With him on the petition were DAVID M.
MAIORANA, of Cleveland, Ohio, and DAVID M. WEIRICH,
The Procter & Gamble Company, of Cincinnati, Ohio.

    WILLIAM H. OLDACH III, Vorys, Sater, Seymour and
Pease, LLP, of Washington, DC, for respondent Clio USA,
Inc. With him on the response was LOUIS GUBINSKY.

   NATHAN K. KELLEY, Solicitor, United States Patent
and Trademark Office, of Alexandria, Virginia, for re-
spondent United States Patent and Trademark Office.
With him on the response were JEREMIAH S. HELM and
JOSEPH MATAL, Associate Solicitors.
               ______________________

                    ON PETITION
                ______________________

  Before LOURIE, PROST, and TARANTO, Circuit Judges.
2                      IN RE PROCTER & GAMBLE COMPANY




TARANTO, Circuit Judge.
                        ORDER
    Clio USA, Inc., petitioned the Director of the United
States Patent & Trademark Office to institute inter partes
reviews of three patents owned by The Proctor & Gamble
Company (P&G). The Director, through her delegee,
granted the petitions. P&G now petitions this court to
issue a writ of mandamus that would direct the PTO to
withdraw the orders instituting inter partes reviews of the
three P&G patents.
    In today’s decision in St. Jude Medical, Cardiology
Div., Inc. v. Volcano Corp., No. 2014-1183, we describe the
statutory scheme governing inter partes reviews, 35
U.S.C. §§ 311-319, and conclude that a decision by the
Director not to institute an inter partes review may not be
appealed to this court. In In re Dominion Dealer Solu-
tions, LLC, No. 2014-109, also issued today, we conclude
that a non-institution decision may not be directly re-
viewed by this court through the extraordinary means of
mandamus. The present case involves a decision by the
Director to institute an inter partes review. We conclude
that immediate review of such a decision is not available
in this court. We therefore deny P&G’s petition for man-
damus relief.
                       BACKGROUND
     P&G owns three patents that claim systems or meth-
ods for whitening teeth—U.S. Patent Nos. 5,891,453,
5,894,017, and 7,122,199. Those patents have been
involved in two district-court actions relevant here. First,
P&G sued Team Technologies, Inc., alleging infringement
of the three patents, in the United States District Court
for the Southern District of Ohio. Clio then filed a declar-
atory-judgment action against P&G in the United States
District Court for the District of New Jersey, alleging that
the same patents were invalid, unenforceable, or not
IN RE PROCTER & GAMBLE COMPANY                              3



infringed. In its declaratory-judgment action, Clio assert-
ed that it manufactured the tooth-whitening products
accused in the Ohio action.
    P&G quickly amended its complaint in the Ohio ac-
tion to add Clio as a defendant. When Team Technologies
and Clio then moved in that action for a stay or a transfer
to the District of New Jersey, the district court in Ohio
denied both motions. Two days later, Clio filed a motion
with the New Jersey district court to dismiss its declara-
tory-judgment action there without prejudice, under
Federal Rule of Civil Procedure 41(a)(1)(B). On January
2, 2013, the New Jersey district court granted that mo-
tion.
    In July 2013, Clio timely petitioned the Director to in-
stitute inter partes reviews of the three patents under 35
U.S.C. §§ 311-319. P&G responded to Clio’s three peti-
tions, arguing that Clio’s earlier declaratory-judgment
action involving the same three patents, though it had
been voluntarily dismissed, barred the institution of inter
partes reviews under section 315(a). 1       The Director,
through the Patent Trial and Appeal Board as her dele-
gee, disagreed and granted all three petitions, deciding
under section 314(a) & (b) to institute the requested inter
partes reviews. 2 The Board explained that, because Clio’s


    1    35 U.S.C. § 315(a)(1) states: “An inter partes re-
view may not be instituted if, before the date on which the
petition for such a review is filed, the petitioner or real
party in interest filed a civil action challenging the validi-
ty of a claim of the patent.”
    2    Section 314 assigns the decision to institute an in-
ter partes review to the “Director.” 35 U.S.C. § 314(a), (b).
The Director, by regulation, has delegated that decision to
the Board. 37 C.F.R. §§ 42.4 & 42.108. The Board, in
making the review-instituting decision, is exercising the
Director’s section 314 authority.
4                       IN RE PROCTER & GAMBLE COMPANY




declaratory-judgment action was dismissed without
prejudice, “[i]n the context of § 315(a)(1), the action never
existed.” J.A. 8 (Board decision granting Clio’s petition
for inter partes review of the ’017 patent); see also J.A. 31
(’453 patent); J.A. 49 (’199 patent).
    P&G asked for rehearing, which the Board denied. In
February 2014, P&G filed the present petition for a writ
of mandamus in this court under 28 U.S.C. § 1651.
                        DISCUSSION
     “The remedy of mandamus is a drastic one, to be in-
voked only in extraordinary situations.” Kerr v. U. S.
Dist. Court for N. Dist. of Cal., 426 U.S. 394, 402 (1976).
Accordingly, “three conditions must be satisfied before it
may issue.” Cheney v. U.S. Dist. Court for D.C., 542 U.S.
367, 380 (2004). The petitioner must show a “‘clear and
indisputable’” right to relief. Id. at 381 (quoting Kerr, 426
U.S. at 403). The petitioner must “lack adequate alterna-
tive means to obtain the relief ” it seeks. Mallard v.
United States District Court, 490 U.S. 296, 309 (1989);
Cheney, 542 U.S. at 380; Kerr, 426 U.S. at 403. And “even
if the first two prerequisites have been met, the issuing
court, in the exercise of its discretion, must be satisfied
that the writ is appropriate under the circumstances.”
Cheney, 542 U.S. at 381.
    Our analysis in St. Jude and Dominion, in which we
reject requests for immediate review of the Director’s
decision not to institute an inter partes review, applies
equally to the Director’s decision to institute such a
review. In particular, what we explained in St. Jude
about chapter 31 generally, section 314(d) particularly,
and our jurisdictional statute requires that we may not
hear an appeal from the Director’s decision to institute an
inter partes review. Nor is there a clear and indisputable
right to this court’s immediate review of a decision to
institute an inter partes review, as would be needed for
mandamus relief, just as Dominion holds that there is no
IN RE PROCTER & GAMBLE COMPANY                               5



such right with respect to a non-institution decision.
Moreover, this is not one of the rare situations in which
irremediable interim harm can justify mandamus, which
is unavailable simply to relieve P&G of the burden of
going through the inter partes review. Cf. In re Roche
Molecular Sys., Inc., 516 F.3d 1003, 1004 (Fed. Cir. 2008)
(petitioner’s “hardship [and] inconvenience” in going
through trial did not provide a basis for mandamus”).
    It is a separate question whether section 314(d)
means that the decision to institute the review is unchal-
lengeable later—if the Board reaches a decision under
section 318(a) and an appeal is taken under section 319.
Perhaps section 314(d)’s broad language precludes all
judicial review of the institution decision, even in an
eventual section 319 appeal. We need not decide that
question, which can be addressed in a section 319 appeal.
Nor need we address whether an immediate challenge
could be brought in district court.
    In sum, P&G’s mandamus petition is not a proper ve-
hicle for challenging the institution of inter partes review.
    Accordingly,
    IT IS ORDERED THAT:
    The petition is denied.
                                    FOR THE COURT

      April 24, 2014                 /s/ Daniel E. O’Toole
           Date                      Daniel E. O’Toole
                                     Clerk of Court
