In re: SOUND VIEW INNOVATIONS, LLC v. Sound View Innovations, LLC, No. IPR2020-00969, 2020 WL 6951823, at 13 P.T.A.B. Nov.…

N OTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: SOUND VIEW INNOVATIONS, LLC,
Petitioner
______________________
2022-161
______________________
On Petition for Writ of Mandamus to the United States
Patent and Trademark Office in No. 90/015,011.
______________________
ON PETITION
______________________
Before L OURIE, T ARANTO, and STARK, Circuit Judges.
STARK, Circuit Judge.
O R D E R
Sound View Innovations, LLC petitions for a writ of
mandamus to vacate the United States Patent and Trade-
mark Office’s (“PTO”) order granting a request for ex parte
reexamination and to remand with instructions to termi-
nate proceedings. The Director of the PTO opposes the pe-
tition. Sound View replies. We deny the petition.
BACKGROUND
Sound View is the owner of U.S. Patent No. 6,708,213
(“the ’213 patent”), which relates to caching of streaming
multimedia data from a content provider over a network to
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IN RE: SOUND VIEW INNOVATIONS, LLC 2
a client’s computer. In 2019, Sound View filed a patent in-
fringement suit against DISH Network L.L.C., DISH Tech-
nologies, L.L.C., and Sling TV L.L.C. (collectively, “DISH”).
In 2020, DISH petitioned the PTO for inter partes review
(“IPR”), arguing that claim 16 of the ’213 patent was antic-
ipated and/or obvious based on two references: Sen and
Geagan.* The Patent Trial and Appeal Board denied the
petition, finding no reasonable likelihood of prevailing on
those challenges. In particular, the Board determined that
DISH had not shown a reasonable likelihood that Sen and
Geagan taught the claimed step of “adjusting a data trans-
fer rate,” DISH Network LLC v. Sound View Innovations,
LLC, No. IPR2020-00969, 2020 WL 6951823, at *13
(P.T.A.B. Nov. 25, 2020).
Five months later, DISH requested ex parte reexami-
nation of claim 16 of the ’213 patent based on Sen and
Geagan in combination with a new reference, Zheng, which
DISH alleged “discloses adjusting a data rate, to the extent
that adjusting a data transfer rate is not disclosed by the
combination of Sen and Geagan.” Appx029. In response,
Sound View petitioned the PTO to reject DISH’s reexami-
nation request under 35 U.S.C. § 325(d), arguing that the
reexamination request raised “substantially the same” art
or arguments that were raised by DISH in the prior IPR
petition. Appx137 (quoting the language of § 325(d)).
On June 16, 2022, the examiner granted DISH’s re-
quest and ordered reexamination of claim 16, determining
that the combination of Sen, Geagan, and Zheng raised a
substantial new question of patentability with respect to
* Hulu, LLC and Walmart Inc. et al. also filed sepa-
rate IPR petitions challenging the same patent. The PTO
denied institution based on Hulu’s petition, which relied on
different prior art than in DISH’s petition. Walmart et al.’s
petition also relied on the Sen reference, but those parties
settled before the PTO issued a decision on institution.
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IN RE: SOUND VIEW INNOVATIONS, LLC 3
claim 16. In rejecting Sound View’s § 325(d) arguments,
which were based on this court’s decision in In re Vivint,
Inc., 14 F.4th 1342 (Fed. Cir. 2021), the examiner found
that the reexamination petition was based on different
grounds than DISH’s prior IPR petition that was denied
and the “requester has not presented serial challenges to
the ’213 patent, other than the single prior IPR petition.”
Appx014. Sound View then filed this mandamus petition
challenging that decision. We have jurisdiction under
28 U.S.C. §§ 1651(a) and 1295(a)(4)(A). See Mylan Lab’ys
Ltd. v. Janssen Pharmaceutica, N.V., 989 F.3d 1375, 1379–
81 (Fed. Cir. 2021).
D ISCUSSION
A writ of mandamus is a “drastic and extraordinary
remedy” reserved for “exceptional circumstances.” Cheney
v. U.S. Dist. Ct. for D.C., 542 U.S. 367, 380 (2004) (internal
quotation marks and citations omitted). A petitioner must
show that it has no other adequate means to obtain the de-
sired relief and has a “clear and indisputable” right to the
writ. Id. at 380–81 (internal quotation marks and citations
omitted). And even when those two requirements are met,
the issuing court, in the exercise of its discretion, must still
be satisfied that the writ is appropriate under the circum-
stances. Id. at 381. This demanding standard has not been
met here.
Mandamus relief is unavailable because a post-final
decision appeal is an adequate remedy by which Sound
View may seek to obtain relief based on its § 325(d) chal-
lenge. See Vivint, 14 F.4th at 1350–54 (reviewing a
§ 325(d) challenge following appeal from the Board’s final
decision); see also Automated Merch. Sys., Inc. v. Lee, 782
F.3d 1376, 1382 (Fed. Cir. 2015) (denying petition seeking
to terminate ongoing reexamination due to “adequate rem-
edy” of an appeal). Sound View argues that it will be forced
to endure a wasteful and burdensome validity challenge to
achieve meaningful judicial review. However, “the burden
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IN RE: SOUND VIEW INNOVATIONS, LLC 4
of participating in the proceedings at issue” is typically in-
sufficient to establish entitlement to the exceptional rem-
edy of mandamus where, as here, the issue may be
reviewed in a typical appeal. Automated Merch. Sys., 782
F.3d at 1382; see Cheney, 542 U.S. at 380–81 (“[T]he writ
will not be used as a substitute for the regular appeals pro-
cess.”); Bankers Life & Cas. Co. v. Holland, 346 U.S. 379,
383–84 (1953) (noting that the possibility of a “myriad of
legal and practical problems as well as inconvenience” does
not ordinarily warrant mandamus).
Moreover, without drawing any definitive conclusion,
we cannot say that Sound View has shown a clear and in-
disputable right to terminate the reexamination proceed-
ings under § 325(d). The examiner concluded that the
addition of the Zheng reference presented different argu-
ments that addressed in a different way the claimed limi-
tation the Board found petitioner had not shown to be
present in the reference combination underlying the earlier
IPR petition. Appx012–013. That determination has not
been shown by Sound View to be so clearly contrary to the
law or the record as to warrant mandamus.
Sound View’s reliance on our decision in Vivint does not
change that calculus. In that case, we held, on direct ap-
peal after a final decision, that the PTO had arbitrarily and
capriciously applied § 325(d) when it granted the re-
quester’s nearly identical request for ex parte reexamina-
tion based on the same arguments raised in its previous
IPR petition that was denied based on the requester’s abu-
sive filing practices. 14 F.4th at 1354. Here, the PTO’s
decision to allow the reexamination to proceed was a case-
specific exercise of discretion that does not create the same
kind of clear, arbitrary departure from prior agency deci-
sions that was at issue in Vivint. And whatever the
strength of the merits of Sound View’s § 325(d) challenge
to that decision may be in an ordinary appeal, it has not
shown a clear and indisputable right to mandamus relief.
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IN RE: SOUND VIEW INNOVATIONS, LLC 5
Accordingly,
I T I S O RDERED T HAT :
The petition is denied.
November 22, 2022
Date
F OR THE COURT
/s/ Peter R. Marksteiner
Peter R. Marksteiner
Clerk of Court
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