§ 314(d) Bar Does Not Defeat Federal Circuit’s Mandamus Jurisdiction

In Mylan Laboratories Ltd. v. Janssen Pharmaceutica, N.V., No. 2021-1071 (March 12, 2021), the Federal Circuit granted Janssen’s motion to dismiss Mylan’s appeal from the Patent Trial and Appeal Board’s (PTAB) denial of inter partes review (IPR) institution.

The Federal Circuit first addressed whether it had jurisdiction over Mylan’s direct appeal. The Federal Circuit concluded that PTAB decisions denying institution of IPR are not subject to review on direct appeal. While the Federal Circuit has exclusive jurisdiction over PTAB’s final decision in an IPR, it does not have such jurisdiction over PTAB’s institution decisions under §314(d). Therefore, Mylan could not directly appeal the PTAB’s decision denying institution of its IPR.

Then, the Federal Circuit addressed whether it had jurisdiction over Mylan’s request for mandamus. A federal court can issue writs of mandamus when necessary to protect its prospective jurisdiction. The Court noted that prospective jurisdiction is triggered when a party takes a preliminary step that might lead to appellate jurisdiction in the Federal Circuit. The preliminary step of an IPR is the filing of a petition, and the Court found jurisdiction over Mylan’s request for mandamus on the merits. Mylan’s request, however, was denied for failing to show a clear right to relief.