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Federal Circuit Case: In re SAP America, Inc.
Amicus brief in support of the USPTO’s discretion to deny IPR petitions and against SAP America, Inc.’s mandamus request
Interest of Amici Curiae
Amicus Curiae Satya Marar is a Visiting Postgraduate Fellow at the Mercatus Center at George Mason University. He researches intellectual property policy, antitrust and competition policy, and technology policy. He has an interest in promoting the proper application of the patent laws and administrative laws in the operations of the Patent Trial and Appeal Board, as the efficient operation of the patent system is essential to the continued success of the innovation economy. He has no stake in the parties or in the outcome of the case. The ideas presented in this document do not represent official positions of the Mercatus Center or George Mason University.
Summary of Argument
This amicus brief offers insight on how administrative law applies to the construction of the memo upon which the petitioner purports to rely as a guidance or a rule, whether this reliance was reasonable, and whether the court should grant the petitioner’s extraordinary request for a writ of mandamus requiring the PTAB to apply the framework outlined in a rescinded memo in deciding whether to discretionarily deny their IPR application. Specifically, former USPTO director Vidal’s June 2022 memo presented only interim guidance on how the PTAB would temporarily apply its precedents regarding the factors it will consider in deciding whether to discretionarily deny an IPR application pending the future announcement of a rule subject to a Notice of Proposed Rulemaking (NPRM). As this rescindable interim guidance was neither a guarantee nor a representation that it would be in effect by the time that petitioner’s IPR came before the PTAB, federal court precedents indicate that the petitioner’s reliance upon it was unreasonable and does not warrant a writ of mandamus that would constrain the PTAB’s Congressionally-granted discretion and require it to apply rescinded interim guidance. Since agency policy guidelines lack the force of law or expected stability of a rule, and since the facts of the present matter indicate no reasonable reliance on the applicability of the guidelines to the petitioner’s IPR application by the time it came before the PTAB, the USPTO is entitled to apply its 2025 guidance memo (the Boalick memo) to deciding on the discretionary denial of the petitioner’s IPR application.
Additional Details
Download the Amicus Brief here.
