Case: 14-131   Document: 15   Page: 1    Filed: 05/05/2014




          NOTE: This order is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                ______________________

  IN RE VERSATA DEVELOPMENT GROUP, INC.
         AND VERSATA SOFTWARE, INC.,
                    Petitioners.
              ______________________

                       2014-131
                ______________________

    On Petition for Writ of Mandamus to the United
States Patent and Trademark Office in Nos. CBM2013-
00052, CBM2013-00053, and CBM2013-00054.
                ______________________

                    ON PETITION
                ______________________

     Before LOURIE, DYK, and REYNA, Circuit Judges.
LOURIE, Circuit Judge.
                         ORDER
    Versata Development Group, Inc. and Versata Soft-
ware, Inc. (“Versata”) petition for a writ of mandamus
directing the United States Patent and Trademark Office
(“PTO”) and its Patent Trial and Appeal Board (“Board”)
to withdraw its orders instituting post-grant review in
cases CBM2013-00052, CBM2013-00053, and CBM2013-
00054.
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2                       IN RE VERSATA DEVELOPMENT GROUP




    In its petition, Versata argues that institution of post-
grant review is barred under 35 U.S.C. § 325(a)(1), which
provides such review “may not be instituted under this
chapter 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 validity of a claim of the
patent.” In rejecting that argument, the Board, acting as
the Director’s delegee, found that the declaratory judg-
ment action in question did not act as a bar under
§ 325(a)(1) because it had been voluntarily dismissed
without prejudice.
    “The remedy of mandamus is a drastic one, to be in-
voked only in extraordinary situations.” Kerr v. U.S. Dist.
Court, 426 U.S. 394, 402 (1976). Accordingly, “three
conditions must be satisfied before it may issue.” Cheney
v. U.S. Dist. Court, 542 U.S. 367, 380 (2004). The peti-
tioner must show a “‘clear and indisputable’” right to
relief. Id. at 381 (quoting Kerr, 426 U.S. at 403). The
petitioner must “lack adequate alternative means to
obtain the relief” it seeks. Mallard v. U.S. Dist. 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 case law makes clear that a party seeking to
compel the PTO to decline to institute review under these
circumstances is not entitled to mandamus relief. In In re
The Proctor & Gamble Company, __ F. 3d __, No. 2014-
121 (Fed. Cir. Apr. 24, 2014), the Director, through her
delegee, instituted inter partes review, rejecting the
patent holder’s argument that a prior declaratory judg-
ment action barred review even though the action had
been dismissed without prejudice. We explained that
because the applicable statutory scheme precludes the
court from hearing an appeal from the Director’s decision
to institute an inter partes review, a party seeking issu-
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 IN RE VERSATA DEVELOPMENT GROUP                            3



ance of the writ to vacate institution of such proceedings
cannot establish a clear and indisputable right to relief.
    The principles in Proctor & Gamble control this case.
The statutory provisions applicable to post-grant review
contain an identical bar to appellate review of institution
determinations by the Director. See 35 U.S.C. § 324(e)
(“The determination by the Director whether to institute a
post-grant review under this section shall be final and
nonappealable.”); see also 35 U.S.C. §§ 141, 329. Thus, as
in inter partes review, a writ of mandamus is not a proper
vehicle for challenging the institution of post-grant re-
view.
      Accordingly,
      IT IS ORDERED THAT:
      The petition is denied.
                                   FOR THE COURT

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


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