Case: 22-145 Document: 31 Page: 1 Filed: 08/16/2022
`United States Court of Appeals
`for the Federal Circuit
`On Petition for Writ of Mandamus to the United States
`Patent and Trademark Office in Nos. IPR2021-01151 and
`Washington, DC, argued for petitioner Palo Alto Networks,
`Inc. Also represented by SCOTT ANTHONY MCKEOWN,
`T. RADSCH, MARK D. ROWLAND, East Palo Alto, CA.
` PAUL J. ANDRE, Kramer Levin Naftalis & Frankel
`LLP, Redwood Shores, CA, argued for respondent Centrip-
`etal Networks, Inc. Also represented by JAMES R. HANNAH,
`Witcoff, Ltd., Washington, DC.
` JOSHUA MARC SALZMAN, Civil Division, Appellate
`Staff, United States Department of Justice, Washington,
`DC, argued for respondent United States Patent and
`Trademark Office.
` Also represented by BRIAN M.


`Case: 22-145 Document: 31 Page: 2 Filed: 08/16/2022
`YASMEEN RASHEED, Office of the Solicitor, United States
`Patent and Trademark Office, Alexandria, VA.
`Before DYK, REYNA, and CHEN, Circuit Judges.
`Opinion for the court filed by Circuit Judge DYK.
`Opinion concurring in the result filed by Circuit Judge
`DYK, Circuit Judge.
`O R D E R
`Palo Alto Networks, Inc. (“PAN”) petitions for a writ of
`mandamus to compel the United States Patent and Trade-
`mark Office (“USPTO”) to accept and consider its Requests
`for Director Rehearing of decisions denying institution of
`inter partes review (“IPR”) and post grant review (“PGR”)
`for patents owned by Centripetal Networks, Inc. (“Centrip-
`etal”). PAN argues that the Director’s current policy of re-
`fusing to accept such requests is contrary to the
`Appointments Clause of the U.S. Constitution, Art. II, § 2,
`cl. 2, as interpreted by the Supreme Court in United States
`v. Arthrex, Inc., 141 S. Ct. 1970 (2021). The USPTO and
`Centripetal oppose, and oral argument was held on
`June 21, 2022.
`We deny the petition, concluding that there has been
`no violation of the Appointments Clause.
`“In 2011, Congress enacted the Leahy-Smith America
`Invents Act (‘AIA’), Pub. L. No. 112-29, 125 Stat. 284
`(2011), to ‘improve patent quality and limit unnecessary


`Case: 22-145 Document: 31 Page: 3 Filed: 08/16/2022
` 3
`and counterproductive litigation costs.’ H.R. Rep. 112-98,
`pt. I, at 40 (2011).” Regents of the Univ. of Minn. v. LSI
`Corp., 926 F.3d 1327, 1335 (Fed. Cir. 2019). Among its pro-
`visions, the AIA created IPR and PGR proceedings to pro-
`vide opportunities for the USPTO to “take a second look at
`patents previously issued by the [agency].” Arthrex, 141 S.
`Ct. at 1977.
`The Patent Trial and Appeal Board (“PTAB” or
`“Board”) is charged with rendering final written decisions
`in such proceedings. 35 U.S.C. §§ 318(a), 328(a).1 Typi-
`cally, and in Arthrex itself, the members of the Board mak-
`ing these decisions are all administrative patent judges
`(“APJs”), who are appointed by the Secretary of Commerce
`and are only removable for cause. § 6(a); Arthrex, 141 S.
`Ct. at 1985.2 Each proceeding is “heard by at least 3 mem-
`bers of the [PTAB], who shall be designated by the Direc-
`tor,” § 6(c), and “the [PTAB] shall issue a final written
`decision with respect to the patentability of any patent
`claim challenged by the petitioner,” §§ 318(a), 328(a). As
`enacted, § 6(c) provided that “[o]nly the [PTAB] may grant
`rehearings.” At the conclusion of the proceedings and any
`related appeals, “the Director shall issue and publish a cer-
`tificate canceling any claim of the patent finally deter-
`mined to be unpatentable.” §§ 318(b), 328(b).
`In Arthrex, a patentee, whose patent claims had been
`found unpatentable by the PTAB, argued that APJs were
`principal officers not properly appointed by the President,
`1 All citations to statutory provisions refer to Title 35
`unless otherwise indicated.
` Although a PTAB panel is typically comprised
`solely of APJs, the statute provides that the PTAB also in-
`cludes “[t]he Director, the Deputy Director, the Commis-
`for Patents,
`the Commissioner
`Trademarks.” § 6(a).
` 2


`Case: 22-145 Document: 31 Page: 4 Filed: 08/16/2022
`with the advice and consent of the Senate. The Appoint-
`ments Clause requires that the President “shall nominate,
`and by and with the Advice and Consent of the Senate,
`shall appoint . . . [principal] Officers of the United States.”
`Art. II, § 2, cl. 2. Thus, “[the President] may be assisted in
`carrying out [executive] responsibility by officers nomi-
`nated by him and confirmed by the Senate, as well as by
`other officers not appointed in that manner but whose
`work . . . must be directed and supervised by an officer who
`has been.” Arthrex, 141 S. Ct. at 1976.
`The Appointments Clause “is among the significant
`structural safeguards of the constitutional scheme. By
`vesting the President with the exclusive power to select the
`principal (noninferior) officers of the United States, [it] pre-
`vents congressional encroachment upon the Executive and
`Judicial Branches.” Edmond v. United States, 520 U.S.
`651, 659 (1997). And, in light of the “thousands of officers
`[who] wield executive power on behalf of the President,”
`“[a]ssigning the nomination power to the President guar-
`antees accountability for the appointees’ actions”—there is
`“a clear and effective chain of command down from the
`President, on whom all the people vote.” Arthrex, 141 S.
`Ct. at 1979 (citation and internal quotation marks omit-
`ted). In this way, the Clause “preserve[s] political account-
`ability,” Edmond, 520 U.S. at 663, by making clear who to
`“blame,” Arthrex, 141 S. Ct. at 1979.
`The Supreme Court in Arthrex held that section 6(c) of
`the statute effectively granted APJs sole authority to ren-
`der final decisions in violation of the Appointments Clause.
`While the Director of the USPTO is vested with the “pow-
`ers and duties” of the agency and is a Presidentially ap-
`pointed, Senate-confirmed officer, § 3(a)(1), APJs are
`members of the PTAB appointed by the Secretary of Com-
`merce, § 6(a); yet APJs exercise significant executive power
`by “issu[ing] . . . final written decision[s] with respect to
`the patentability of any patent claim challenged” in an IPR
`or PGR proceeding, §§ 318(a), 328(a). See Arthrex, 141 S.


`Case: 22-145 Document: 31 Page: 5 Filed: 08/16/2022
` 5
`Ct. at 1980–81. And although “[t]he Director fixes the rate
`of pay for APJs, controls the decision whether to institute
`[] review, and selects the APJs” to sit on a particular panel,
`among other supervisory acts, id. at 1980, he had “no
`means of countermanding the final decision” of the PTAB
`by operation of § 6(c), id. at 1982. Hence, the Director was
`“the boss, except when it comes to the one thing that makes
`the APJs officers exercising ‘significant authority’ in the
`first place—their power to issue decisions on patentabil-
`ity.” Id. at 1980 (citation omitted). By “assign[ing] APJs
`‘significant authority’ in adjudicating the public rights of
`private parties, while also insulating their decisions from
`review and their offices from removal,” the statute ran
`afoul of the Appointments Clause. Id. at 1986 (citation
`The Supreme Court held § 6(c) unenforceable “to the
`extent that its requirements prevent the Director from re-
`viewing final decisions rendered by APJs.” Id. at 1987.
`Having “forb[ade] the enforcement of statutory restrictions
`on the Director that insulate the decisions of APJs from
`[her] direction and supervision,” id. at 1988, the Court re-
`manded the case to the Director “to decide whether to re-
`hear the petition” in the first instance, making “clear [that]
`the Director need not review every decision of the PTAB.
`What matters is that the Director have the discretion to
`review decisions rendered by APJs.” Id. at 1987–88. In
`parallel with the remand, the USPTO established interim
`procedures for parties to request Director review of final
`written decisions from IPR and PGR proceedings.
`The present case involves a challenge to the procedures
`relating to institution decisions rather than the provisions
`governing final written decisions (at issue in Arthrex).
`“The Director shall determine whether to institute” an
`IPR or PGR proceeding based on a third party’s petition.
`§§ 314, 324. The petitioner must show a likelihood of


`Case: 22-145 Document: 31 Page: 6 Filed: 08/16/2022
`success for its patentability challenge. The institution de-
`cision is committed “to the Director’s unreviewable discre-
`tion,” Arthrex, 141 S. Ct. at 1977, and is “final and
`nonappealable,” §§ 314(d), 324(e). “By regulation, the Di-
`rector has delegated this authority to the PTAB itself.” Ar-
`threx, 141 S. Ct. at 1977; see 37 C.F.R. § 42.4(a) (“The Board
`institutes the trial on behalf of the Director.”). We held in
`Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023,
`1033 (Fed. Cir. 2016), that “both as a matter of inherent
`authority and general rulemaking authority, the Director
`ha[s] authority to delegate the institution decision to the
`Board.” However, the regulations do not provide for re-
`hearing by the Director, though they do not preclude it.
`They merely state that “[a] party may request rehearing on
`a decision by the Board on whether to institute [a proceed-
`ing].” 37 C.F.R. § 42.71(c).
`Centripetal filed a complaint against PAN in district
`court asserting infringement of, inter alia, U.S. Patent
`Nos. 10,659,573 and 10,931,797. PAN then filed an IPR
`petition for the ’573 patent and a PGR petition for the ’797
`patent. After PAN filed its petitions, and while they were
`pending, the USPTO updated its interim guidance regard-
`ing Director review, noting that the agency “does not accept
`requests for Director review of decisions on institution.”
`SAppx 59; USPTO Resp. Br. at 6.
`The PTAB denied institution. PAN then filed Requests
`for Director Rehearing seeking Director review of the non-
`institution decisions. The agency acknowledged receipt of
`the requests but noted that “‘[a]t this time, the [USPTO]
`does not accept requests for Director review of decisions on
`institution . . .; parties may only request Director review of
`final written decisions issued in inter partes reviews and
`post-grant reviews.’ Arthrex Q&As, A9. The requests,
`therefore, will not be considered.” Appx 34 (alterations in
`original); see also Palo Alto Networks, Inc. v. Centripetal


`Case: 22-145 Document: 31 Page: 7 Filed: 08/16/2022
` 7
`IPR2021-01151, Paper 11
`Mar. 17, 2022); Palo Alto Networks, Inc. v. Centripetal Net-
`works, Inc., PGR2021-00108, Paper 10 (P.T.A.B. Mar. 17,
`2022). In response to PAN’s request for clarification, the
`USPTO further noted that PAN’s “rehearing requests will
`not revert to the Board panel and there will be no further
`review of the Board’s decision by the Office.” Appx 35.
`PAN filed this petition for a writ of mandamus chal-
`lenging the agency’s refusal to accept (and deliver to the
`Director) its Requests for Director Rehearing. Thereafter,
`the recently appointed Director updated the interim guid-
`ance to state that “the Office does not accept requests for
`Director review of institution decisions” but that “the Di-
`rector has always retained and continues to retain the au-
`thority to review such decisions sua sponte after issuance
`(at the Director’s discretion).” SAppx 67. The Director has
`since exercised that authority. See, e.g., OpenSky Indus.,
`LLC v. VLSI Tech. LLC, IPR2021-01064, Paper No. 41
`(P.T.A.B. June 7, 2022); Pat. Quality Assurance, LLC v.
`VLSI Tech. LLC, IPR2021-01229, Paper No. 31 (P.T.A.B.
`June 7, 2022).
`“[A]ll courts established by Act of Congress may issue
`all writs necessary or appropriate in aid of their respective
`jurisdictions and agreeable to the usages and principles of
`law.” 28 U.S.C. § 1651(a). To obtain a writ of mandamus,
`the petitioner bears the “demanding, [but] not insupera-
`ble,” burden of showing: (1) there are “no other adequate
`means to attain the relief” requested, (2) the “right to issu-
`ance of the writ is clear and indisputable,” and (3) “the writ
`is appropriate under the circumstances.” Cheney v. U.S.
`Dist. Ct. for D.C., 542 U.S. 367, 380–81 (2004) (citations
`and internal quotation marks omitted).
`The statute governing institution decisions bars ap-
`peal. §§ 314(d), 324(e). Given that there is no adequate
`remedy by way of direct appeal of decisions denying


`Case: 22-145 Document: 31 Page: 8 Filed: 08/16/2022
`institution, “we [have] conclude[d] that judicial review is
`available in extraordinary circumstances by petition for
`mandamus” in this court under 28 U.S.C. §§ 1295(a)(4),
`1651. Mylan Lab’ys Ltd. v. Janssen Pharmaceutica, N.V.,
`989 F.3d 1375, 1379–81 (Fed. Cir. 2021).
`As a preliminary matter, Centripetal (but not the
`USPTO) argues that PAN forfeited its Appointments
`Clause challenge by seeking to initiate IPR and PGR pro-
`ceedings, relying on our decision in Ciena Corp. v. Oyster
`Optics, LLC, 958 F.3d 1157 (Fed. Cir. 2020). In Ciena, we
`held that a petitioner forfeited its Appointments Clause
`challenge to a final written decision where it “was content
`to have the assigned Board judges adjudicate its invalidity
`challenges until the Board ruled against it” and only after-
`wards asserted that the members of the panel “were not
`appointed in compliance with the Appointments Clause.”
`Id. at 1159.
`We need not decide whether PAN similarly forfeited its
`Appointments Clause challenge by seeking institution de-
`cisions under regulations that make no provision for Direc-
`tor review (arguably a different situation from that
`presented in Ciena) because “courts of appeals may forgive
`waiver or forfeiture of claims that implicate structural con-
`stitutional concerns.” Id. at 1160; see id. at 1161 (“While
`the presence of a structural separation of powers issue can
`justify considering a matter in the face of a clear waiver or
`forfeiture, it does not compel it.”); see also Freytag v.
`Comm’r, 501 U.S. 868, 878–79 (1991) (recognizing “discre-
`tion to consider nonjurisdictional claims that had not been
`raised below,” including “Appointments Clause objec-
`We conclude that it is appropriate to address PAN’s
`structural constitutional challenge in this case despite pos-
`sible forfeiture.


`Case: 22-145 Document: 31 Page: 9 Filed: 08/16/2022
` 9
`Relying on Arthrex, PAN argues that the categorical re-
`fusal to accept requests for Director review of institution
`decisions violates the Appointments Clause. Pet. at 2.
`Even assuming non-institution decisions constitute “final
`decision[s] on how to exercise executive power,” Arthrex,
`141 S. Ct. at 1984; see Arthrex, Inc. v. Smith & Nephew,
`Inc., 35 F.4th 1328, 1333 (Fed. Cir. 2022) (“Arthrex II”)
`(“[A]n inferior officer generally cannot issue a final agency
`decision[.]”), this case fundamentally differs from Arthrex.
`Here, there is no structural impediment to the Director’s
`authority to review institution decisions either by statute
`or by regulation. Indeed, institution decisions are, by stat-
`ute, the Director’s to make and are only made by the Board
`as a matter of delegated authority.
`The statutes provide that “[t]he Director shall deter-
`mine whether to institute” proceedings. §§ 314, 324. Alt-
`hough the Director delegated that authority to the Board,
`37 C.F.R. § 42.4(a) (“The Board institutes the trial on be-
`half of the Director.”), the Director plainly has the author-
`ity to revoke the delegation or to exercise her review
`authority in individual cases despite the delegation.3 It
`makes no difference that the Director delegated institution
`3 As a matter of practice, the Director expressly re-
`tained review authority (in guidance issued after PAN’s pe-
`tition for mandamus), SAppx 67, and has since exercised
`that authority, see OpenSky, IPR2021-01064, Paper No. 41;
`Pat. Quality Assurance, IPR2021-01229, Paper No. 31.
`And, as a matter of law, “the usual rule [is] that an agency
`head’s delegation of her authority to subordinates is prem-
`ised, at least in part, on the delegating official maintaining
`the power to review the decisions of the delegee,” Villar-
`real-Dancy v. U.S. Dep’t of the Air Force, No. 19-2985, 2021
`WL 3144942, at *9 (D.D.C. July 26, 2021). See Arthrex, 141
`S. Ct. at 1983–84.


`Case: 22-145 Document: 31 Page: 10 Filed: 08/16/2022
`authority to the PTAB without express “retention of any
`avenue for Director intervention.” Reply Br. at 8 (emphasis
`omitted). “That the Appointments Clause requires that a
`[Presidentially appointed, Senate-confirmed officer] have
`review authority does not mean that a principal officer,
`once bestowed with such authority, cannot delegate it to
`other agency officers,” Arthrex II, 35 F.4th at 1339, such as
`the PTAB in this case.
`The unambiguous identification of the Director as the
`politically accountable executive officer responsible for in-
`stitution decisions maintains the clear “lines of accounta-
`bility demanded by the Appointments Clause,” from the
`President to the Director, and allows the President to “at-
`tribute [any] failings to those whom he can oversee.” Ar-
`threx, 141 S. Ct. at 1981–82 (citation and emphasis
`omitted). We see no Appointments Clause “infirmity in the
`institution decision as the statute clearly bestows [] author-
`ity on the Director.” Arthrex, Inc. v. Smith & Nephew, Inc.,
`941 F.3d 1320, 1340 (Fed. Cir. 2019), vacated, 141 S. Ct.
`We read the Supreme Court’s decision in Arthrex as
`confirming that the statutory and regulatory provisions
`concerning institution do not violate the Appointments
`Clause. After reviewing the administrative scheme, and
`specifically noting that “the Director has delegated [insti-
`tution] authority to the PTAB itself,” Arthrex, 141 S. Ct.
`at 1977, the Court concluded that the Director “controls the
`decision whether to institute,” id. at 1980. The Court then
`found that the power of APJs “to issue [final] decisions on
`patentability” without the ability of the Director to review
`such determinations offended the Appointments Clause.
`Id. (emphasis added).
`In every respect save the insulation of their deci-
`sions from review within the Executive Branch,
`APJs appear to be inferior officers—an under-
`standing consistent with their appointment in a


`Case: 22-145 Document: 31 Page: 11 Filed: 08/16/2022
` 11
`manner permissible for inferior but not principal
`officers. . . . If the Director were to have the author-
`ity to take control of a PTAB proceeding, APJs
`would properly function as inferior officers.
`Id. at 1986–87 (citation and internal quotation marks omit-
`ted). Thus, although not directly addressing the issue be-
`fore us, this language strongly suggests that delegation to
`the Board of the authority to decide on institution without
`a mechanism for parties to subsequently request Director
`review does not present Appointments Clause problems.
`We find additional support from the Supreme Court’s
`discussion of our earlier decision in In re Alappat, 33 F.3d
`1526 (Fed. Cir. 1994). See Arthrex, 141 S. Ct. at 1985. As
`noted in Arthrex, the plurality opinion in Alappat described
`how a patent applicant at the time of Alappat could appeal
`an adverse determination by a patent examiner to the
`Board of Patent Appeals and Interferences and seek re-
`hearing by the Board, but could not appeal to the Commis-
`sioner of Patents and Trademarks. Arthrex, 141 S. Ct. at
`1985 (quoting Alappat, 33 F.3d at 1535). However, the
`Commissioner of Patents and Trademarks “retained ‘the
`ultimate authority regarding
`the granting of pa-
`tents’ . . . notwithstanding the lack of a formal appeal from
`the Board’s decision.” Id.
`So too the decisions in various circuits, including our
`own, have uniformly rejected similar Appointments Clause
`challenges before and after Arthrex. For example, in In re
`Grand Jury Investigation, 916 F.3d 1047 (D.C. Cir. 2019),
`a pre-Arthrex decision, the D.C. Circuit affirmed an order
`holding a party in civil contempt for failure to comply with
`a grand jury subpoena issued by special counsel appointed
`by the Attorney General. The affected party argued the
`special counsel’s appointment violated the Appointments
`Clause, but the court concluded that even though there
`were regulations that purportedly limited the Attorney
`General’s supervisory authority, that did not create a


`Case: 22-145 Document: 31 Page: 12 Filed: 08/16/2022
`constitutional infirmity in part because the “limitations on
`the Attorney General’s oversight and removal powers are
`in regulations that the Attorney General can revise or re-
`peal, see 5 U.S.C. § 553(a)(2), (b)(A), (b)(B), (d)(3).” Id. at
`1052. This meant special counsel “effectively serves at the
`pleasure of an Executive Branch officer who was ap-
`pointed” in compliance with the Appointments Clause. Id.
`In another pre-Arthrex decision, Willy v. Administra-
`tive Review Board, 423 F.3d 483, 491 (5th Cir. 2005) (cita-
`tion omitted), the Fifth Circuit rejected a challenge to the
`Secretary of Labor’s creation of an Administrative Review
`Board comprised of inferior officers that “issue[d] final
`agency decisions.” The court noted that “[t]he relevant
`statutes expressly grant rulemaking, enforcement, and ad-
`judicative authority to the Secretary” and concluded that
`the Secretary’s “delegation of decision-making authority to
`[the Administrative Review Board did] not violate the Ap-
`pointments Clause.” Id. at 494 (emphasis added). So too,
`in Varnadore v. Secretary of Labor, 141 F.3d 625, 631–32
`(6th Cir. 1998), the Sixth Circuit concluded that the Secre-
`tary of Labor’s “establishment of the [Administrative Re-
`view Board] and delegation to it of final decision-making
`responsibility is authorized under the Appointments
`The same is true after Arthrex. Recently, in United
`States v. Donziger, No. 21-2486, 2022 WL 2232222 (2d Cir.
`June 22, 2022), the Second Circuit identified structural au-
`thority, rather than supervisory activity, as a key consid-
`eration under Arthrex. In Donziger, a district court had
`appointed special prosecutors for a criminal contempt trial,
`and the defendant argued that the prosecution violated the
`Appointments Clause because the special prosecutors were
`inferior officers who lacked supervision by a principal of-
`ficer. Id. at *2. The Second Circuit agreed that the special
`prosecutors were inferior officers but found no Appoint-
`ments Clause violation because “it is clear that [they] are
`subject to the supervision of the Attorney General” under


`Case: 22-145 Document: 31 Page: 13 Filed: 08/16/2022
` 13
`his “broad statutory authority to supervise all litigation in-
`volving the United States.” Id. at *7. “Whether they were
`in fact supervised is beside the point” because “‘[w]hat mat-
`ters is that the [principal officer] have the discretion to re-
`view decisions rendered by [the inferior officer].’” Id.
`(quoting Arthrex, 141 S. Ct. at 1988). “The Constitution
`does not mandate a minimum level of supervisory activity
`over the work of inferior officers; rather, it requires as a
`matter of structural authority that inferior officers be sub-
`ject to the supervision and direction of principal officers.”
`Id. Institution decisions made by APJs are similarly sub-
`ject to supervision and direction by the Director, which sat-
`isfies the Appointments Clause even if that authority is
`not, in fact, exercised.
`Finally, in Piano Factory Group, Inc. v. Schiedmayer
`Celesta GmbH, 11 F.4th 1363 (Fed. Cir. 2021), also decided
`after Arthrex, we rejected an Appointments Clause chal-
`lenge to the Trademark Trial and Appeal Board (“TTAB”).4
`The TTAB issued a final decision cancelling the registra-
`tion of a federal trademark, and the appellant challenged
`the decision as a violation of the Appointments Clause
`based on the alleged lack of Director review. Significantly,
`just as in the context of the PTAB’s institution decisions
`and final written decisions post-Arthrex, “there are
`no . . . statutory restraints on the Director’s authority [to
`rehear TTAB panel decisions],” id. at 1372, leaving the Di-
`rector free to review such decisions in compliance with the
`Appointments Clause. See Arthrex, 141 S. Ct. at 1986–
`4 Under the current statute, which was enacted after
`the TTAB’s decision, the Director has the express “author-
`ity to reconsider, and modify or set aside, a decision of the
`[TTAB].” 15 U.S.C. § 1068 (Trademark Modernization Act
`of 2020, Pub. L. No. 116-260, div. Q, tit. II, subtit. B, § 228,
`134 Stat. 1182, 2209–10).


`Case: 22-145 Document: 31 Page: 14 Filed: 08/16/2022
`We rejected the contention that, irrespective of the Di-
`rector’s authority, failure to “guarantee litigants the oppor-
`tunity to obtain Director review of adverse [] decisions”
`constitutes a violation of the Appointments Clause. Piano
`Factory, 11 F.4th at 1374. We reiterated that “the Appoint-
`ments Clause was intended to prevent unappointed offi-
`cials from wielding too much authority, not to guarantee
`procedural rights to litigants, such as the right to seek re-
`hearing from the Director . . . . [W]hether the Director
`elects to exercise [her review] authority does not affect the
`status of ATJs [or APJs] as inferior officers under the Ap-
`pointments Clause.” Id. Under Arthrex, “[w]hat matters
`is that the Director have the discretion to review [final] de-
`cisions,” 141 S. Ct. at 1988, which the Director has in this
`We conclude that the delegation of authority as to
`whether to institute IPR and PGR proceedings to the Board
`and the Director’s policy refusing to accept party requests
`for Director rehearing of decisions not to institute do not
`violate the Appointments Clause.
`The petition is denied.
`August 16, 2022
` Date
` /s/ Peter R. Marksteiner
` Peter R. Marksteiner
` Clerk of Court


`Case: 22-145 Document: 31 Page: 15 Filed: 08/16/2022
`United States Court of Appeals
`for the Federal Circuit
`On Petition for Writ of Mandamus to the United States
`Patent and Trademark Office in Nos. IPR2021-01151 and
`REYNA, Circuit Judge, concurring.
`I concur with my colleagues that PAN’s petition for
`writ of mandamus should be denied. But I disagree as to
`The Supreme Court has long recognized that manda-
`mus is a “drastic and extraordinary remedy reserved for
`really extraordinary causes.” Cheney v. U.S. Dist. Court for
`D.C., 542 U.S. 367, 380 (2004) (internal quotations and ci-
`tations omitted). In fact, mandamus relief is to be granted
`only where the petitioner has demonstrated (1) it has no
`other adequate means to attain the desired relief; (2) it has
`a clear and indisputable right to issuance of the writ; and
`(3) the writ is appropriate under the circumstances. Id.
`This court also recognizes that mandamus is an extraordi-
`nary remedy to be granted only in rare circumstances. See,
`e.g., Mylan Lab’ys Ltd. v. Janssen Pharmaceutica, N.V.,
`989 F.3d 1375, 1379 (Fed. Cir. 2021); Waymo LLC v. Uber
`Techs., Inc., 870 F.3d 1350, 1357 (Fed. Cir. 2017); JAMES


`Case: 22-145 Document: 31 Page: 16 Filed: 08/16/2022
`(3rd ed. 2013).
`The analysis, therefore, of whether a petition meets the
`high standard for mandamus begins and ends with a prin-
`cipled focus on the specific relief sought by the petitioner.
`In my view, the majority loses sight of the precise remedy
`PAN seeks. “PAN seeks a writ of mandamus from this
`Court pursuant to the provisions of 28 U.S.C. § 1651 and
`Rule 21(a) of the Federal Rules of Appellate Procedure com-
`pelling the agency to accept (and deliver to the Director for
`consideration) its Requests for Director Rehearing in Nos.
`IPR2021-01151 and PGR2021-00108.” Pet. at 2. PAN “re-
`spectfully requests that the Court issue a writ of manda-
`mus to the Director of the Patent and Trademark Office to
`accept PAN’s Requests for Director Rehearing for consider-
`ation on the merits by the Director.” Id. at 19.
`According to PAN, mandamus is required because the
`Director’s “categorical refusal to accept Requests for Direc-
`tor Rehearing related to institution decisions insulates an
`entire category of final agency decisions from Director re-
`view and thus runs afoul of [the Appointments Clause].”
`Pet. at 1. In other words, the agency has nailed shut its
`window for filing Requests for Director Rehearing.
`I generally agree that a categorical denial by the Direc-
`tor to accept any requests for review raises potential con-
`stitutional concerns. But I need not reach that question
`and its related analysis because two circumstances under-
`cut PAN’s claim that the Director categorically refuses to
`accept Requests for Director Rehearing.
`First, in denying PAN’s requests for review, the Direc-
`tor noted that she was not accepting requests for review
`“[a]t this time.” App’x 34. This suggests that there is no
`“categorical refusal” to accept requests for review, but ra-
`ther, that the Director has exercised her discretion not to
`invoke her review authority. The window is not nailed
`shut; it is closed for the moment.


`Case: 22-145 Document: 31 Page: 17 Filed: 08/16/2022
` 3
`Second, the Director precisely exercised her review au-
`thority in two other actions where she granted sua sponte
`review of determinations denying institution.1 See, e.g.,
`OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064,
`Paper No. 41 (P.T.A.B. June 7, 2022); Pat. Quality Assur-
`ance, LLC v. VLSI Tech. LLC, IPR2021-01229, Paper
`No. 31 (P.T.A.B. June 7, 2022). This outcome is consistent
`with the Patent Office guidance published April 22, 2022.
`The guidance provides that “the Director has always re-
`tained and continues to retain the authority to review [in-
`stitution] decisions sua sponte.” Patent Office SApp’x 67.
`In my view, the Director’s exercise of discretion to grant
`review in those two actions pulls the rug out from under
`PAN’s petition. The agency window is open after all.
`I would deny the petition for writ of mandamus on
`grounds that it fails to meet the high standard set for man-
`damus relief. First, this is not an extraordinary case re-
`quiring extraordinary relief. PAN’s desired relief already
`exists. The facts here are clear. The agency has a process
`for the Director to exercise her discretion to accept (and
`thereby consider) requests for review. This process aligns
`with the Supreme Court’s decision in United States v. Ar-
`threx, 141 S. Ct. 1970, 1988 (2021) (“To be clear, the Direc-
`tor need not review every decision of the PTAB. What
`matters is that the Director have the discretion to review
`decisions rendered by APJs.”).
`Second, PAN also fails to demonstrate a clear and in-
`disputable right to a writ that would compel the Director
`to do what she has already done. We should not compel a

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