In Re IOENGINE, LLC v. Mayacamas Corp., 485 U.S. 271, 289 1988 citation omitted . A

N OTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In Re IOENGINE, LLC,
Petitioner
______________________
2024-110
______________________
On Petition for Writ of Mandamus to the United States
Patent and Trademark Office in Nos. 90/015,292 and
90/015,293.
______________________
ON PETITION
______________________
Before M OORE, Chief Judge, T ARANTO and CHEN, Circuit
Judges.
MOORE, Chief Judge.
O R D E R
IOENGINE, LLC petitions for a writ of mandamus di-
recting the United States Patent and Trademark Office
(“Patent Office”) to vacate its decisions ordering the under-
lying ex parte reexaminations and to terminate those pro-
ceedings under 35 U.S.C. § 325(d). We deny the petition.
In December 2021, IOENGINE sued Roku, Inc. in dis-
trict court for infringing U.S. Patent Nos. 10,447,819 and
10,972,584. In response, Roku petitioned for inter partes
review (“IPR”) of the patents. The Patent Trial and Appeal
Case: 24-110 Document: 7 Page: 1 Filed: 02/20/2024

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IN RE IOENGINE, LLC 2
Board denied institution. As to the ’819 patent, the Board
found that the grounds raised by Roku failed to establish a
reasonable likelihood that it would prevail with respect to
at least one of the challenged claims. As to the ’584 patent,
the Board exercised its discretion to deny institution on the
ground that it would be an inefficient use of resources in
light of the pending district court litigation between the
parties.
While continuing to defend itself in the infringement
action, Roku in September 2023 petitioned for ex parte
reexamination of the asserted patents. IOENGINE then
petitioned the Patent Office under 37 C.F.R. § 1.181 to re-
ject Roku’s petitions, arguing they should be denied under
35 U.S.C. § 325(d) because the petitions were based on the
same or substantially the same prior art or arguments pre-
sented in Roku’s previously unsuccessful IPR petitions.
In December 2023, the Patent Office granted reexami-
nation over IOENGINE’s objections, concluding Roku had
raised substantial new questions of patentability. As to the
’819 patent, the Patent Office determined that the prior art
(and associated arguments) presented in Roku’s reexami-
nation petition were not the same or substantially the
same as those in the IPR petitions. It also found no com-
pelling basis to reject reexamination of the ’584 patent, not-
ing the Board had not fully considered the merits presented
in the earlier IPR petitions.
Mandamus is “reserved for extraordinary situations.”
Gulfstream Aerospace Corp. v. Mayacamas Corp., 485 U.S.
271, 289 (1988) (citation omitted). A petitioner must:
(1) show that it has a clear and indisputable right to relief;
(2) show it does not have any other adequate method of ob-
taining relief; and (3) convince the court that the “writ is
appropriate under the circumstances.” Cheney v. U.S. Dist.
Ct. for D.C., 542 U.S. 367, 380–81 (2004) (citation omitted).
IOENGINE has not met that demanding standard.
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IN RE IOENGINE, LLC 3
IOENGINE has not shown that a post-final decision
appeal here is an inadequate remedy to obtain relief based
on its § 325(d) challenge. See In re Vivint, Inc., 14 F.4th
1342 (Fed. Cir. 2021) (reviewing a § 325(d) challenge fol-
lowing appeal from final decision); In re Sound View Inno-
vations, LLC, No. 2022-161, 2022 WL 17099155 (Fed. Cir.
Nov. 22, 2022) (denying mandamus because petitioner
seeking same relief had an adequate remedy of an appeal);
In re Knauf Insulation, Inc., No. 2022-166, 2022 WL
17098755 (Fed. Cir. Nov. 22, 2022) (same).
Furthermore, the decision to decline reexamination un-
der § 325(d) is generally left to the discretion of the Patent
Office. See § 325(d) (“[T]he Director may take into account
whether, and reject the petition or request because, the
same or substantially the same prior art or arguments pre-
viously were presented to the Office.”). IOENGINE’s peti-
tion has not established a clear and indisputable right to
preclude the Patent Office’s case-specific decisions here.
Accordingly,
I T I S O RDERED T HAT :
The petition is denied.
February 20, 2024
Date
F OR THE COURT
Case: 24-110 Document: 7 Page: 3 Filed: 02/20/2024

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