NOTE: This order is nonprecedential.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 MOORE, Chief Judge, TARANTO and CHEN, Circuit 

Judges.

MOORE, Chief Judge.

O R D E R

IOENGINE, LLC petitions for a writ of mandamus directing the United States Patent and Trademark Office

(“Patent Office”) to vacate its decisions ordering the underlying ex parte reexaminations and to terminate those proceedings under 35 U.S.C. § 325(d). We deny the petition.

In December 2021, IOENGINE sued Roku, Inc. in district 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
2 IN RE IOENGINE, LLC

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 reject 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 presented in Roku’s previously unsuccessful IPR petitions. 

In December 2023, the Patent Office granted reexamination 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 reexamination petition were not the same or substantially the 

same as those in the IPR petitions. It also found no compelling basis to reject reexamination of the ’584 patent, noting 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 obtaining 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. 

Case: 24-110 Document: 7 Page: 2 Filed: 02/20/2024
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 following appeal from final decision); In re Sound View Innovations, 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 under § 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 previously were presented to the Office.”). IOENGINE’s petition has not established a clear and indisputable right to 

preclude the Patent Office’s case-specific decisions here. 

Accordingly, 

 IT IS ORDERED THAT: 

The petition is denied.

February 20, 2024

 Date

FOR THE COURT

 

Case: 24-110 Document: 7 Page: 3 Filed: 02/20/2024