APA Challenge Strikes a Chord

I’ve read a number of articles over the past few days that argue since the mandamus on Fintiv failed in Mylan Laboratories Ltd. v. Janssen Pharmaceuticals N.V., that this decision somehow forecloses the relief sought in the APA suit against the USPTO — not even close. The question of appellate jurisdiction over denied institution decisions (or what would amount to a proper mandamus) has absolutely nothing to do with the direct challenges made by the plaintiffs in the pending APA lawsuit.

Indeed, I expect the application of Fintiv to be enjoined within weeks (if not sooner).

While the government has been quick to cite to the Mylan denial (here), the plaintiffs have pointed out that this mandamus decision has no relation to the issues raised in the APA suit , explaining that the current suit is not related to a specific institution denial (but a general unlawful practice), the mandamus decision does not analyze the exercise of discretion relative to the aspects of AIA framework that prevent such, and does not reach any APA issues. (here)

When assessing the merits of the APA arguments at a summary judgment hearing last week, U.S. District Judge Edward J. Davila characterized the Fintiv practice as “chang[ing] the whole procedural aspect of IP practice, and to such an extent that it is not something that is in the purview of the Director’s unilateral decision.” The judge also found such action finding no basis in the AIA, and found that making a determination to institute based on the “moving target” of a district court trial date to be “arbitrary and inappropriate.”

These comments were not lost on the government, now preparing for a likely adverse decision.

My bet is that Fintiv is dead.

Coming soon.

Scott A. McKeown is an author of the Patents Post Grant