Case: 14-104   Document: 21     Page: 1    Filed: 02/18/2014




          NOTE: This order is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

           IN RE MCM PORTFOLIO, LLC,
                     Petitioner.
               ______________________

                        2014-104
                 ______________________

    On Petition for Writ of Mandamus to the United
States Patent and Trademark Office in No. IPR2013-
00217.
                ______________________

                     ON PETITION
                 ______________________

  Before RADER, Chief Judge, DYK and WALLACH, Circuit
                        Judges.

WALLACH, Circuit Judge.
                       ORDER
    MCM Portfolio, LLC filed suit against the Hewlett-
Packard Company (“HP”), alleging infringement of U.S.
Patent No. 7,162,549. Within one year of receiving that
complaint, HP filed a petition for inter partes review with
the Patent Trial and Appeals Board (“Board”), seeking to
challenge the validity of the patent in suit. MCM re-
sponded that HP could not bring such review based on a
distribution arrangement between HP and a digital
picture frame manufacturer that MCM had separately
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2                           IN RE MCM PORTFOLIO, LLC




sued for infringement of the same patent more than one
year before the filing of HP’s petition.
    Over MCM’s objections, the Board granted HP’s re-
quest to institute inter partes review. MCM now seeks
mandamus review of that decision, arguing that the
Board was barred from instituting these proceedings
pursuant to 35 U.S.C. § 315(b). That statute provides
that “[a]n inter partes review may not be instituted if the
petition requesting the proceeding is filed more than 1
year after the date on which the petitioner, real party in
interest, or privy * of the petitioner is served with a com-
plaint alleging infringement of the patent.” HP and the
Director of the Patent and Trademark Office oppose.
    In seeking such relief, MCM faces a heavy burden. It
must show: (1) that it has a clear legal right to relief; (2)
that there are no adequate alternative legal channels
through which petitioner may obtain that relief; and (3)
that the grant of mandamus is appropriate under the
circumstances. See Cheney v. U.S. Dist. Court, 542 U.S.
367, 380-81 (2004); Kerr v. U.S. Dist. Court for N. Dist. of
Cal., 426 U.S. 394, 403 (1976). MCM has not shown that
this standard has been met. We deny the petition without



    * “Privy” generally refers to a “sufficiently close rela-
tionship” between the purported privy and the relevant
other party such that both should be bound by the trial
outcome and related estoppel provisions. Office Patent
Trial Guide, 77 Fed. Reg. 48759 (Aug. 14, 2012); see also
generally Int’l Nutrition v. Horphag Research, 220 F.3d
1325, 1329 (Fed. Cir. 2000) (“A variety of relationships
between two parties can give rise to the conclusion that a
nonparty to an action is ‘in privity’ with a party to the
action for purposes of the law of judgments, which is
simply a shorthand way of saying that the nonparty will
be bound by the judgment in that action.”).
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 IN RE MCM PORTFOLIO, LLC                                 3



prejudice to MCM attempting to raise its section 315(b)
arguments on appeal after final decision by the Board.
      Accordingly,
      IT IS ORDERED THAT:
      The petition for a writ of mandamus is denied.
                                    FOR THE COURT

                                      /s/ Daniel E. O’Toole
                                          Daniel E. O’Toole
                                          Clerk of Court


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