IN RE DOMINION DEALER SOLUTIONS, LLC., Petitioner
On Petition for Writ of Mandamus to the United States Patent and Trademark Office.
STEVEN J. ROCCI, Woodcock Washburn LLP, of Philadelphia, Pennsylvania, for petitioner. With him on the petition were HENRIK D. PARKER and JEFFREY W. LESOVITZ.
NATHAN K. KELLEY, Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia, for respondent United States Patent and Trademark Office. With him on the response were FRANCES M. LYNCH and MEREDITH H. SCHOENFELD, Associate Solicitors.
CRAIG S. SUMMERS, Knobbe, Martens, Olson & Bear, LLP, of Irvine, California, for respondent AutoAlert, Inc. With him on the response were PAUL A. STEWART, DAVID G. JANKOWSKI and CHERYL T. BURGESS.
Before PROST, O'MALLEY, and TARANTO, Circuit Judges.
Taranto, Circuit Judge .
Dominion Dealer Solutions, LLC, petitioned the Director of the United States Patent & Trademark Office to institute inter partes reviews of five patents owned by AutoAlert, Inc. The Director, through her delegee, denied the petitions. Dominion now petitions this court to issue a writ of mandamus that would vacate the non-institution decisions and order the Director to institute an inter partes review for each of the five AutoAlert patents. As we decide today in St. Jude Medical, Cardiology Div., Inc. v. Volcano Corp., No. 2014-1183, however, the relevant statutory provisions make clear that we may not hear an appeal from the Director's decision not to institute an inter partes review. Based on that decision, we deny Dominion's petition for mandamus relief.
This dispute began in the United States District Court for the Central District of California, where AutoAlert sued Dominion, alleging infringement of five patents. The patents claim systems and methods that involve alerting a car dealership when a new lease or sale opportunity seems a good fit for a past customer. AutoAlert, Inc. v. Dominion Dealer Solutions, LLC, No. 8:12-cv-1661 (C.D. Cal. filed Oct. 1, 2012).
After being served the complaint in the California action, Dominion timely petitioned the Director for inter partes reviews of those five patents under 35 U.S.C. § § 311-319. The California district court then stayed the case pursuant to section 315(a)(2). The Director, through the Patent Trial and Appeal Board as her delegee, denied the petition, deciding under section 314(a) & (b) not to institute any of the requested inter partes reviews. The Board explained that none of Dominion's petitions showed, as required to launch such a review, " that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged." Id. § 314(a).
Dominion filed requests for rehearing, arguing that unrebutted evidence demonstrated a reasonable likelihood that the challenged claims are invalid. The Board denied rehearing. In October 2013, Dominion sued the PTO in the United States District Court for ...