United States Court of Appeals 

for the Federal Circuit ______________________ 

In re: MAXPOWER SEMICONDUCTOR, INC.,

Petitioner

______________________ 

2021-146

______________________ 

On Petition for Writ of Mandamus to the United States 

Patent and Trademark Office in Nos. IPR2020-01674, 

IPR2020-01675, IPR2020-01676, and IPR2020-01677.

______________________ 

ROGER L. COOK, Roger Cook Law, San Francisco, CA, 

for petitioner MaxPower Semiconductor, Inc. Also represented by NANCY TOMPKINS. 

 LISA KOBIALKA, Kramer Levin Naftalis & Frankel LLP, 

Menlo Park, CA, for respondent ROHM Semiconductor 

USA, LLC. Also represented by JAMES R. HANNAH; AARON 

M. FRANKEL, SHANNON H. HEDVAT, CRISTINA MARTINEZ, 

New York, NY.

--------------------------------------------------

MAXPOWER SEMICONDUCTOR, INC.,

Appellant

v.

ROHM SEMICONDUCTOR USA, LLC,

Appellee

______________________ 

Case: 21-146 Document: 19 Page: 1 Filed: 09/08/2021
2 IN RE: MAXPOWER SEMICONDUCTOR, INC. 

2021-1950, 2021-1951, 2021-1952, 2021-1953

______________________ 

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2020-

01674, IPR2020-01675, IPR2020-01676, and IPR2020-

01677.

______________________ 

ROGER L. COOK, Roger Cook Law, San Francisco, CA, 

for appellant. Also represented by NANCY TOMPKINS. 

 JAMES R. HANNAH, Kramer Levin Naftalis & Frankel 

LLP, Menlo Park, CA, for appellee. Also represented by 

LISA KOBIALKA; AARON M. FRANKEL, SHANNON H. HEDVAT,

CRISTINA MARTINEZ, New York, NY. 

______________________ 

ON PETITION

______________________ 

Before O’MALLEY, REYNA, and CHEN, Circuit Judges. 

Order for the court filed by Circuit Judge REYNA. 

Opinion concurring in part and dissenting in part filed by 

Circuit Judge O’MALLEY. 

REYNA, Circuit Judge. 

O R D E R

MaxPower Semiconductor, Inc. (“MaxPower”) directly 

appeals the Patent Trial and Appeal Board’s (“Board”) determinations to institute inter partes review proceedings, 

which involve four MaxPower patents. MaxPower alternatively seeks a writ of mandamus to review those decisions. 

Case: 21-146 Document: 19 Page: 2 Filed: 09/08/2021
IN RE: MAXPOWER SEMICONDUCTOR, INC. 3

A decision to institute inter partes review proceedings, 

like a decision not to institute, is “nonappealable” under 

35 U.S.C. § 314(d). See Mylan Lab’ys Ltd. v. Janssen Pharmaceutica, N.V., 989 F.3d 1375, 1378 (Fed. Cir. 2021); In re 

Procter & Gamble Co., 749 F.3d 1376, 1378–79 (Fed. Cir. 

2014); see also Loughlin v. Ling, 684 F.3d 1289, 1292 

(Fed. Cir. 2012) (holding that 28 U.S.C. § 1295(a)(4)(A) incorporates a finality requirement). Section 314(d)’s rule of 

nonappealability confirms the unavailability of jurisdiction 

under § 1295(a)(4)(A) to hear MaxPower’s direct appeals. 

Section 314(d) also presents an obstacle for MaxPower in 

showing a clear and indisputable right to this court’s immediate review of the Board’s decisions necessary to grant 

its alternative requests for mandamus relief. Procter & 

Gamble, 749 F.3d at 1379. 

MaxPower suggests that the collateral order doctrine

warrants immediate review because its challenge implicates questions of whether the Board can institute proceedings that are subject to arbitration. But that doctrine only

allows appeal when an order “affect[s] rights that will be 

irretrievably lost in the absence of an immediate appeal.” 

Apple Inc. v. Samsung Elecs. Co., 727 F.3d 1214, 1220 

(Fed. Cir. 2013) (citation and internal quotation marks 

omitted). If MaxPower is truly not raising matters that are 

absolutely barred from appellate review under section 314(d) (an issue we need not decide here), then MaxPower can meaningfully raise its arbitration-related 

challenges after the Board’s final written decisions. We 

therefore cannot say that MaxPower has established jurisdiction to review these decisions under the collateral order 

doctrine. See generally Queipo v. Prudential Bache Sec., 

Inc., 867 F.2d 721, 722 (1st Cir. 1989) (holding an order

denying a stay in favor of arbitration is not effectively unreviewable after final judgment under the collateral order 

doctrine). 

We likewise reject MaxPower’s argument that its appeals are authorized under 9 U.S.C. § 16(a)(1). That 

Case: 21-146 Document: 19 Page: 3 Filed: 09/08/2021
4 IN RE: MAXPOWER SEMICONDUCTOR, INC. 

provision states that an appeal may be taken from an order 

“refusing a stay of any action under section 3 of this title,” 

“denying a petition under section 4 of this title to order arbitration to proceed,” “denying an application under section 206 of this title to compel arbitration,” “confirming or 

denying confirmation of an award or partial award,” or 

“modifying, correcting, or vacating an award.” The Board’s

decisions do not fall within any of those categories. 

Finally, MaxPower has not shown that this mandamus 

petition is not merely a “means of avoiding the statutory 

prohibition on appellate review of agency institution decisions.” In re Power Integrations, Inc., 899 F.3d 1316, 1321 

(Fed. Cir. 2018). MaxPower readily admits, “This mandamus petition challenges decisions instituting inter partes 

review.” Pet. v; see also, e.g., Pet. 1 (“[MaxPower] seeks a 

writ of mandamus directing the [Board] to vacate orders 

instituting inter partes review.”). And MaxPower has not 

shown that the facts of this case support an exception to

the nonappealability of institution decisions and unavailability of mandamus relief. See Mylan Lab’ys., 989 F.3d 

at 1381, 1382 n.5 (suggesting availability of mandamus 

when the Board clearly and indisputably exceeds its authority to grant a petition to institute IPR); Power Integrations, 899 F.3d at 1321 (citing Cuozzo Speed Techs., LLC v. 

Lee, 136 S. Ct. 2131, 2141–42 (2016)). 

For example, the arguments raised by MaxPower do 

not show, under the demanding standards for mandamus, 

that the Board has clearly and indisputably exceeded its 

authority. The Board is not bound by the private contract 

between MaxPower and ROHM. And MaxPower fails to 

explain why 35 U.S.C. § 294 clearly deprives the Board of 

authority to institute inter partes review when the statute 

does not by its terms task the agency with enforcing private 

arbitration agreements. The partial dissent offers, sua 

sponte, a theory for why mandamus might be warranted, 

but the two cases on which the dissent primarily relies, 

EEOC v. Waffle House, Inc., 534 U.S. 279 (2002), and 

Case: 21-146 Document: 19 Page: 4 Filed: 09/08/2021
IN RE: MAXPOWER SEMICONDUCTOR, INC. 5

Preston v. Ferrer, 552 U.S. 346 (2008), are not cited anywhere in MaxPower’s petition, and we disagree that either 

case applies regardless. Preston neither holds nor suggests 

that an agency tribunal itself is required to enforce or comply with an arbitration agreement, as opposed to a court 

exercising its power over the parties to compel them into 

arbitration as was the procedural posture in Preston. It is 

the party that “cannot escape resolution” in an arbitral forum. Id. at 359. We do not see, then, how the Board’s action is one that clearly exceeded the scope of its authority.1 

Accordingly, 

 IT IS ORDERED THAT: 

(1) Appeal Nos. 2021-1950, -1951, -1952, -1953 are dismissed. 

(2) MaxPower’s mandamus petition (ECF No. 2 in No. 

2021-146) is denied.

(3) Each side shall bear its own costs.

September 8, 2021

 Date 

FOR THE COURT

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court

1 Moreover, although we need not go through the 

mandamus framework, we note that MaxPower fails to 

show it has no other avenue of relief, as MaxPower remains 

free to ask the courts to enjoin ROHM from proceeding with 

the inter partes reviews. See, e.g., Dodocase VR, Inc. v. 

MerchSource, LLC, 767 F. App’x 930 (Fed. Cir. 2019) (affirming a preliminary injunction ordering petitioner to 

withdraw its inter partes petitions due to a forum selection 

clause in the parties’ contract). 

Case: 21-146 Document: 19 Page: 5 Filed: 09/08/2021
United States Court of Appeals 

for the Federal Circuit ______________________ 

In re: MAXPOWER SEMICONDUCTOR, INC.,

Petitioner

______________________ 

2021-146

______________________ 

On Petition for Writ of Mandamus to the United States 

Patent and Trademark Office in Nos. IPR2020-01674, 

IPR2020-01675, IPR2020-01676, and IPR2020-01677.

-------------------------------------------------

MAXPOWER SEMICONDUCTOR, INC.,

Appellant

v.

ROHM SEMICONDUCTOR USA, LLC,

Appellee

______________________ 

2021-1950, 2021-1951, 2021-1952, 2021-1953

______________________ 

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2020-

01674, IPR2020-01675, IPR2020-01676, and IPR2020-

01677.

______________________ 

ON PETITION

Case: 21-146 Document: 19 Page: 6 Filed: 09/08/2021
2 IN RE: MAXPOWER SEMICONDUCTOR, INC. 

______________________ 

O’MALLEY, Circuit Judge, concurring-in-part and dissenting-in-part. 

35 U.S.C. § 294 makes agreements to arbitrate patent 

validity “valid, irrevocable, and enforceable, except for any

grounds that exist at law or in equity for revocation of a 

contract.” The majority’s denial of a writ of mandamus in 

this case allows the Patent Trial and Appeal Board to add 

a new caveat to Congress’s clear instruction that agreements to arbitrate patent validity shall be “valid, irrevocable, and enforceable”—i.e., except during inter partes

review. 

There is no support for this new exception in the text 

of the statute itself. Indeed, the Board and the majority 

ignore the statutory text of § 294 and the strong policy favoring arbitration repeatedly confirmed by the Supreme 

Court. In so doing, they irreversibly harm MaxPower by 

denying it the benefit of its arbitration agreement. And 

they cast a shadow over all agreements to arbitrate patent 

validity, which, after today, apply only in district courts 

and not in inter partes review proceedings. Because the 

majority’s approach is inconsistent with the statutory text

and Supreme Court precedent, I dissent from the denial of 

MaxPower’s mandamus petition in Appeal No. 21-146. I 

concur in the dismissal of Appeal Nos. 2021-1950, -1951, 

-1952, and -1953. 

I. BACKGROUND 

In 2007, ROHM Japan and MaxPower entered a technology license agreement (“TLA”) which, as amended in 

2011, includes an agreement to arbitrate “[a]ny dispute, 

controversy, or claim arising out of or in relation to this 

Agreement or at law, or the breach, termination, or validity 

thereof . . . .” In 2019 and 2020, a dispute arose between 

ROHM Japan and MaxPower concerning whether the TLA 

covers ROHM’s silicon carbide RFP/RSFP products. In 

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IN RE: MAXPOWER SEMICONDUCTOR, INC. 3

September 2020, MaxPower notified ROHM Japan of its 

intent to initiate arbitration in thirty days. Shortly thereafter, on September 23, 2020, ROHM Semiconductor USA, 

LLC (“ROHM USA” or “ROHM”), a wholly owned subsidiary of ROHM Japan, filed a complaint for declaratory judgment of noninfringement of four MaxPower patents in the 

Northern District of California and four inter partes review 

petitions concerning those same four patents.1 In a onepage order, the district court found that the TLA “unmistakably delegate[s] the question of arbitrability to the arbitrator.” Rohm Semiconductor USA, LLC v. MaxPower 

Semiconductor, Inc., No. 20-cv-06686-VC, 2021 WL 

822932, at *1 (N.D. Cal. Feb. 4, 2021). The district court

compelled ROHM USA to arbitrate and dismissed the 

case.2 

1 Complaint for Declaratory Judgment of Non-Infringement, ROHM Semiconductor USA, LLC v. MaxPower 

Semiconductor, Inc., No. 20-cv-06686-VC (N.D. Cal. filed 

Sep. 23, 2020), ECF No. 1; Petition for Inter Partes Review 

of United States Patent No. 7,843,004, ROHM Semiconductor USA, LLC v. MaxPower Semiconductor, Inc., 

IPR2020-01674 (P.T.A.B. filed Sep. 23, 2020), Paper No. 1; 

Petition for Inter Partes Review of United States Patent 

No. 8,076,719, ROHM Semiconductor USA, LLC v. MaxPower Semiconductor, Inc., IPR2020-01675 (P.T.A.B. filed 

Sep. 23, 2020), Paper No. 1; Petition for Inter Partes Review 

of United States Patent No. 8,466,025, ROHM Semiconductor USA, LLC v. MaxPower Semiconductor, Inc., 

IPR2020-01676 (P.T.A.B. filed Sep. 23, 2020), Paper No. 1; 

Petition for Inter Partes Review of United States Patent 

No. 8,659,076, ROHM Semiconductor USA, LLC v. MaxPower Semiconductor, Inc., IPR2020-01677 (P.T.A.B. filed 

Sep. 23, 2020), Paper No. 1. 2 ROHM appealed that decision to this court in Case 

No. 21-1709, which is currently pending. 

Case: 21-146 Document: 19 Page: 8 Filed: 09/08/2021
4 IN RE: MAXPOWER SEMICONDUCTOR, INC. 

Months later, on April 15, 2021, the Board instituted 

ROHM’s four inter partes review petitions. The Board held 

“that the arbitration clause is not a reason to decline institution.” Decision Granting Institution at 10–11, ROHM 

Semiconductor USA, LLC v. MaxPower Semiconductor, 

Inc., IPR2020-01674 (P.T.A.B. Apr. 15, 2021), Paper No. 

14. 3 It held that “even if the question of whether patentability falls within the scope of the agreement to arbitrate is 

committed to the arbiter” there is no “statute, rule, or policy that would preclude the Office from acting on the Petition.” Id. at 11. The Board rejected MaxPower’s argument 

that 35 U.S.C. § 294 applies to inter partes review proceedings because Chapter 31 of the U.S.C., which provides for 

those proceedings, is “an entirely different Chapter” than 

the one under which § 294 falls.4 Id. at 12. The Board further found that any issues related to the TLA are beyond 

the Board’s mandate as they are issues of contractual interpretation. In a footnote, the Board compared the arbitration issue to cases in which this court found that state 

sovereign immunity and tribal immunity are “not implicated” in inter partes review proceedings. 

MaxPower filed four interlocutory appeals of the 

Board’s institution decisions. MaxPower Semiconductor, 

Inc. v. ROHM Semiconductor USA, LLC, Nos. 21-1950, 

21-1951, 21-1952, 21-1953 (Fed. Cir. docketed May 14, 

2021) (consolidated under No. 21-1950). I concur in the 

majority’s dismissal of those appeals because 35 U.S.C. 

§ 314(d) provides that “[t]he determination by the Director 

3 All citations are to the Board’s institution decision 

in IPR2020-01674. The Board’s discussion of the arbitration issue appears to be identical in all four institution decisions. 

4 Section 294 is in Chapter 29, which concerns civil 

actions rather than administrative actions. 

Case: 21-146 Document: 19 Page: 9 Filed: 09/08/2021
IN RE: MAXPOWER SEMICONDUCTOR, INC. 5

whether to institute an inter partes review under this section shall be final and nonappealable.” 

MaxPower also sought a writ of mandamus. MaxPower 

Semiconductor, Inc. v. ROHM Semiconductor USA, LLC, 

No. 21-146 (Fed. Cir. docketed May 14, 2021). It asked this 

court to stay or terminate the inter partes review proceedings without prejudice to later institution if an arbitrator 

decides that inter partes review proceedings are appropriate. The majority denies that request without even conducting oral argument on this question of first impression. 

I dissent. 

II. DISCUSSION

I believe that mandamus is warranted. At the very 

least, I believe that this important issue of first impression 

deserves oral argument with the four inter partes review 

proceedings stayed pending our decision.

In this court’s recent decision in Mylan, we held that, 

“[w]hile there is no avenue for direct appeal of decisions 

denying institution, . . . judicial review is available in extraordinary circumstances by petition for mandamus.” 

Mylan Lab'ys Ltd. v. Janssen Pharmaceutica, N.V., 989 

F.3d 1375, 1379 (Fed. Cir. 2021). While we did not grant a 

writ of mandamus in that case, we noted that we “need not 

decide whether any petition for writ of mandamus challenging the Patent Office’s grant of institution could ever 

be meritorious.” Id. at 1382 n.5 (emphasis in original). We 

further recognized that decisions granting institution are 

fundamentally different from denials because a patentee 

has much more to lose from a grant than a challenger may

lose from a denial. Id. (citing Cuozzo Speed Techs., LLC v. 

Lee, 136 S. Ct. 2131, 2153 n.6 (2016) (Alito, J., concurringin-part and dissenting-in-part)). 

To show that it is entitled to a writ of mandamus, MaxPower must “(1) show that it has a clear and indisputable 

legal right; (2) show it does not have any other adequate 

Case: 21-146 Document: 19 Page: 10 Filed: 09/08/2021
6 IN RE: MAXPOWER SEMICONDUCTOR, INC. 

method of obtaining relief; and (3) convince the court that 

the writ is appropriate under the circumstances.” Id. at 

1382. This case provides exactly the sort of extraordinary 

circumstances under which mandamus review is appropriate. 

A. Clear and Indisputable Legal Right

MaxPower has a clear and indisputable legal right to 

enforcement of the TLA’s arbitration provision. Section 

294 confirms as much when it states that arbitration provisions relating to patent validity “shall be valid, irrevocable, and enforceable, except for any grounds that exist at 

law or in equity for revocation of a contract.” 35 U.S.C. 

§ 294(a).

The Supreme Court’s repeated pronouncements of the 

“liberal federal policy favoring arbitration agreements” under the Federal Arbitration Act (“FAA”), 9 U.S.C. § 2, further confirm MaxPower’s right to arbitration. See AT&T 

Mobility LLC v. Concepcion, 563 U.S. 333, 346 (2011) (quoting Moses H. Cone Mem'l Hosp. v. Mercury Constr. Corp., 

460 U.S. 1, 24 (1983)); see also Buckeye Check Cashing, Inc. 

v. Cardegna, 546 U.S. 440, 443 (2006); Gilmer v. Interstate/Johnson Lane Corp., 500 U.S. 20, 25 (1991); AT&T

Techs., Inc. v. Commc'ns Workers of Am., 475 U.S. 643, 650 

(1986); United Steelworkers of Am. v. Warrior & Gulf Nav. 

Co., 363 U.S. 574, 582–83 (1960). The Supreme Court has 

held that “any doubts concerning the scope of arbitrable issues should be resolved in favor of arbitration.” Moses H. 

Cone, 460 U.S. at 24–25. 

The Board did not resolve “any doubts concerning the 

scope of arbitrable issues . . . in favor of arbitration.” See 

id. It did the opposite. It found that, even if there are no 

doubts about the applicability of the arbitration provision, 

there is no “statute, rule, or policy that would preclude” it 

from instituting inter partes review. Decision Granting Institution at 11, Rohm, IPR2020-01674, Paper No. 14. 

Case: 21-146 Document: 19 Page: 11 Filed: 09/08/2021
IN RE: MAXPOWER SEMICONDUCTOR, INC. 7

Contrary to the Board’s assertions, the strong “federal 

policy favoring arbitration agreements” embodied in the 

FAA and in 35 U.S.C. § 294 applies to the Board just as it 

applies to federal courts. Although no cases have yet addressed whether § 294 applies in inter partes reviews, Supreme Court cases considering the FAA indicate that § 294 

should apply in those proceedings. 

Cases addressing section 2 of the FAA are applicable to 

cases concerning 35 U.S.C. § 294. Section 294 was enacted 

in 1982 to “allow parties to make the enforcement provisions of the Federal Arbitration Act . . . applicable to patent 

contracts.” Flex-Foot, Inc. v. CRP, Inc., 238 F.3d 1362, 1365 

(Fed. Cir. 2001). As a result, “[t]he FAA is applicable to 

settlement and license agreements involving patents.” Microchip Tech. Inc. v. U.S. Philips Corp., 367 F.3d 1350, 

1354 (Fed. Cir. 2004). Further, 9 U.S.C. § 2 and 35 U.S.C 

§ 294(a) have nearly identical language. 9 U.S.C. § 2 states 

that: 

A written provision in any maritime transaction or 

a contract evidencing a transaction involving commerce to settle by arbitration a controversy thereafter arising out of such contract or transaction, or 

the refusal to perform the whole or any part 

thereof, or an agreement in writing to submit to arbitration an existing controversy arising out of 

such a contract, transaction, or refusal, shall be 

valid, irrevocable, and enforceable, save upon such 

grounds as exist at law or in equity for the revocation of any contract. 

9 U.S.C. § 2 (emphasis added).

Similarly, 35 U.S.C. § 294(a) states:

A contract involving a patent or any right under a 

patent may contain a provision requiring arbitration of any dispute relating to patent validity or infringement arising under the contract. In the 

Case: 21-146 Document: 19 Page: 12 Filed: 09/08/2021
8 IN RE: MAXPOWER SEMICONDUCTOR, INC. 

absence of such a provision, the parties to an existing patent validity or infringement dispute may 

agree in writing to settle such dispute by arbitration. Any such provision or agreement shall be 

valid, irrevocable, and enforceable, except for any 

grounds that exist at law or in equity for revocation 

of a contract. 

35 U.S.C. § 294(a) (emphasis added).

Finally, 35 U.S.C. § 294 expressly incorporates certain 

provisions of the FAA in § 294(b): 

Arbitration of such disputes, awards by arbitrators 

and confirmation of awards shall be governed by title 9, to the extent such title is not inconsistent 

with this section.

Two Supreme Court cases indicate that the FAA, and, 

therefore, 35 U.S.C. § 294, apply to prevent institution of 

agency proceedings initiated by a party to an arbitration 

agreement: EEOC v. Waffle House, Inc., 534 U.S. 279 

(2002), and Preston v. Ferrer, 552 U.S. 346 (2008).5 In Waffle House, the Supreme Court found that an arbitration 

agreement between an employee and employer did not bar 

an enforcement action brought by the EEOC because the 

EEOC was not a signatory to the agreement. 534 U.S. at 

5 The majority notes that MaxPower did not raise 

Preston or Waffle House in its petition. But that MaxPower 

did not cite those cases does not prevent this court from 

considering them or any other applicable law. “When an 

issue or claim is properly before the court, the court is not 

limited to the particular legal theories advanced by the 

parties, but rather retains the independent power to identify and apply the proper construction of governing law.” 

Kamen v. Kemper Fin. Servs., Inc., 500 U.S. 90, 99 (1991). 

There is nothing improper with sua sponte seeking guidance in binding Supreme Court precedent. 

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IN RE: MAXPOWER SEMICONDUCTOR, INC. 9

297. But, in Waffle House, the Supreme Court noted that 

it might hold differently if “the EEOC could prosecute its 

claim only with [the employee’s] consent, or if its prayer for 

relief could be dictated by” the employee, who was a party 

to the arbitration agreement. Id. at 291. 

In Preston, the Supreme Court distinguished Waffle 

House, noting that in Waffle House the agency sat “not as 

adjudicator but as prosecutor[.]” 552 U.S. at 359. The Supreme Court went on to “disapprove the distinction between judicial and administrative proceedings” and find

that the FAA overrides state statutes that refer certain disputes to an administrative agency for initial adjudication. 

Id. at 360. Preston shows that arbitration agreements can 

preclude an administrative agency’s exercise of its otherwise lawful jurisdiction to adjudicate disputes, such as the 

Board’s jurisdiction over inter partes review proceedings. 

And Waffle House is not to the contrary. Unlike the EEOC 

in Waffle House, the Board sits as a neutral adjudicator rather than as a party, and ROHM, a signatory to the TLA, 

had complete control over the inter partes review petitions.6 

In Preston, the Supreme Court determined that the validity of a contract between an actor, Alex Ferrer, and his 

former attorney, Arnold Preston, must be determined by an 

arbitrator pursuant to the contract’s arbitration agreement, despite a California law that vested original jurisdiction over the dispute with the California Labor 

Commissioner. Preston, 552 U.S. at 350. Preston had 

sought arbitration to recover fees allegedly due under a 

6 Indeed, we have held that the Board may only decide invalidity grounds raised by a petitioner in its petition 

and “the Board must base its decision on arguments that 

were advanced by a party, and to which the opposing party 

was given a chance to respond.” In re Magnum Oil Tools 

Int'l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016). 

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10 IN RE: MAXPOWER SEMICONDUCTOR, INC. 

contract with Ferrer. Id. Ferrer responded by filing a petition to the California Labor Commissioner charging that 

the contract was invalid and unenforceable under the California Talent Agencies Act because Preston had acted as a 

talent agent without the requisite license. Id. The Talent 

Agencies Act grants the Labor Commissioner exclusive jurisdiction to decide issues such as that raised by Ferrer. Id. 

at 355–56. Ferrer argued that the Labor Commissioner’s 

original jurisdiction under the Talent Agencies Act is not 

incompatible with the FAA because it merely postpones arbitration until after the Labor Commissioner issues her final decision. Id. at 356. The Supreme Court rejected that 

argument, holding that any arbitration that might potentially follow the Labor Commissioner’s decision “would 

likely be long delayed, in contravention of Congress’ intent” 

to provide speedy access to and resolution of arbitration. 

Id. at 357–58. Ferrer also asked the Supreme Court to 

overlook the conflict between the arbitration clause and the 

Talent Agencies Act “because proceedings before the Labor 

Commissioner are administrative rather than judicial.” Id. 

at 358. The Supreme Court rejected this argument. It distinguished Waffle House because, unlike the EEOC, the Labor Commissioner “serves as an impartial arbiter” rather 

than as an advocate. Id. at 359. The Supreme Court concluded that the issue was only one of which forum hears 

the parties’ dispute, not of substantive rights available to 

the parties. Id. It held that, “under the contract he signed, 

[Ferrer] cannot escape resolution of those rights in an arbitral forum.” Id. 

Preston shows that § 294 prevents the Board’s consideration of patent validity in inter partes review proceedings, at least until after an arbitrator has determined that 

the issue is not one for arbitration. Applying the Supreme 

Court’s analysis in Preston, § 294 is incompatible with the 

Board’s exercise of original jurisdiction over IPR proceedings. Permitting the Board to ignore § 294 would delay or 

prevent arbitration, in contravention of Congress’s 

Case: 21-146 Document: 19 Page: 15 Filed: 09/08/2021
IN RE: MAXPOWER SEMICONDUCTOR, INC. 11

intention to provide for speedy institution and resolution of 

arbitration. Preston is analogous to the situation before us 

here, as the Board, like the Labor Commissioner in Preston, acts as a neutral arbiter, not an advocate, and ROHM, 

a party to the TLA, initiated and maintains some control 

over the inter partes review proceedings. 

Waffle House does not foreclose application of § 294 or 

the FAA to prevent institution of inter partes review. 

ROHM, unlike the employee in Waffle House, is the master 

of its own petition (which is analogous to a complaint), and 

the Board cannot institute inter partes review without 

ROHM’s first petitioning for it. And, while ROHM and 

MaxPower cannot compel the Board to terminate the proceedings, if they request termination before the Board “has 

decided the merits of the proceeding,” the Board may 

choose to terminate the proceeding. See 35 U.S.C. § 317(a). 

Thus, ROHM and MaxPower, both parties to the TLA, have

ongoing influence over the proceedings. 

The Board’s reasoning that 35 U.S.C. § 294 does not 

apply in the inter partes review context because the statutes governing inter partes review proceedings are in a different chapter than § 294 is unavailing. If Congress 

intended to limit § 294 to Chapter 29, it could have easily 

done so by limiting its application to “this chapter” as it has 

done in many other statutes. Supreme Court cases, such 

as Preston, show that the FAA applies to proceedings governed by statutes outside of Chapter 1 of Title 9, even those 

governed by statutes which do not appear in the United 

States Code at all. There is no reason to distinguish § 294 

or limit its application only to Chapter 29. 

The Board’s comparison of § 294 to sovereign immunity 

is similarly unavailing. In Regents of the University of Minnesota v. LSI Corp., 926 F.3d 1327 (Fed. Cir. 2019), cert. 

denied, 140 S. Ct. 908 (2020), this court held that “sovereign immunity does not apply to . . . agency proceedings 

commenced by the United States,” such as inter partes

Case: 21-146 Document: 19 Page: 16 Filed: 09/08/2021
12 IN RE: MAXPOWER SEMICONDUCTOR, INC. 

review proceedings. 926 F.3d at 1337–38. We have not addressed the impact of private arbitration agreements and 

how those agreements affect the Board’s institution of inter 

partes review. 

The Board also asserted that interpretation of the TLA 

is beyond its mandate. Neither the Board nor ROHM has 

cited any statute or cases from this court or the Supreme 

Court to support this assertion. The Board pointed to two 

previous Board decisions in which it declined to interpret 

forum selection clauses, but those cases are not binding 

here. Moreover, the Board need not have undertaken 

much, or indeed, any, contractual interpretation here. The 

Board could have relied on the district court’s finding that 

arbitrability is an issue for the arbitrator, and refused to 

institute until the parties have completed arbitration. To 

the extent there is any uncertainty in the TLA, the Board

should have heeded the Supreme Court’s pronouncement 

that “any doubts concerning the scope of arbitrable issues

should be resolved in favor of arbitration,” and refused to 

institute until after the parties have undertaken arbitration to resolve the issue. See Moses H. Cone, 460 U.S. at

24–25. 

The majority asserts that neither § 294 nor the Supreme Court’s precedent in Preston requires the Board to 

enforce the parties’ arbitration agreement. But the Board 

need not enforce the arbitration agreement. It need merely 

defer to the arbitration agreement by staying or terminating its own proceedings until the arbitration issue is resolved. The majority states that it is the parties, not the 

Board, that “cannot escape resolution” in an arbitral forum. 

But the majority and the Board permit ROHM to do exactly 

that—escape resolution in an arbitral forum. 

The majority also relies on the fact that § 294 does not, 

on its face, task the Board with enforcing private 

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IN RE: MAXPOWER SEMICONDUCTOR, INC. 13

arbitration agreements in inter partes review proceedings.7 

But § 294 need not list every possible situation in which it 

applies. Section 294 does not mention its applicability to 

administrative proceedings, but nor does it cabin its applicability only to judicial proceedings. Rather, it is a statute of general applicability—it says only that arbitration 

provisions “shall be valid, irrevocable, and enforceable[.]” 

And the statutes governing inter partes review proceedings, which were enacted years after § 294, never state that 

§ 294 does not apply in those proceedings. As the Supreme 

Court has noted, there is a “‘stron[g] presum[ption]’ that 

repeals by implication are ‘disfavored’ and that ‘Congress 

will specifically address’ preexisting law when it wishes to 

suspend its normal operations in a later statute.” Epic Sys. 

Corp. v. Lewis, 138 S. Ct. 1612, 1624 (2018) (quoting United 

States v. Fausto, 484 U.S. 439, 452, 453 (1988)). If Congress wanted to open a loophole in § 294 by permitting the 

Board to ignore that section in inter partes review proceedings, surely it would have said so. 

B. No Other Avenue for Adequate Relief

MaxPower has no other adequate method of obtaining 

relief. We have determined that § 314(d) precludes interlocutory appeal of the Board’s grants of institution here. A 

writ of mandamus directing the Board to terminate or stay

the inter partes reviews is the only way to prevent the reviews from proceeding. See In re Princo Corp., 478 F.3d 

1345, 1357 (Fed. Cir. 2007) (finding that a party whose

right “cannot be vindicated by direct appeal” “lacks adequate alternative means to obtain the relief sought” (internal quotation marks and citation omitted)). By forcing 

7 If, as the majority implies, § 294 applies only in judicial and not in administrative forums, that may lead to 

the odd result of this court being prevented from hearing 

appeals from inter partes review final decisions, as § 294 

would require enforcement of the arbitration provision. 

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14 IN RE: MAXPOWER SEMICONDUCTOR, INC. 

MaxPower to defend the validity of its patents through 

multiple concurrent inter partes review proceedings, the 

majority denies MaxPower the benefit of any agreement to 

arbitrate validity. If the Board finds that any of MaxPower’s claims are invalid, the harm to MaxPower is compounded. Under § 294, an arbitrator’s invalidity 

determinations are binding only on the parties to the arbitration and has no effect on anyone else. 35 U.S.C. § 294(c). 

An arbitrator cannot cancel a patent claim. If the Board 

finds a claim invalid during inter partes review, it cancels 

the claim. 

In enacting § 294, Congress intended to assure contracting parties “that they could avail themselves of the numerous advantages of arbitration without the possibility of 

having to reargue the dispute in court.” H.R. Rep. No. 97-

542, at 13 (1982). In a House Committee on the Judiciary 

Report recommending passage of the appropriations act 

which contained the first version of § 294, the Committee 

explained: 

The advantages of arbitration are many: it is usually cheaper and faster than litigation; it can have 

simpler procedural and evidentiary rules; it normally minimizes hostility and is less disruptive of 

ongoing and future business dealings among the 

parties; it is often more flexible in regard to scheduling of times and places of hearings and discovery 

devices; and, arbitrators are frequently better 

versed than judges and juries in the area of trade 

customs and the technologies involved in these disputes.

Id. 

By denying mandamus to correct the Board’s incorrect 

holding that arbitration provisions cannot prevent institution of inter partes review, this court deprives MaxPower of 

all of those advantages, except, perhaps, the last. While 

Administrative Patent Judges are admittedly well-versed 

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IN RE: MAXPOWER SEMICONDUCTOR, INC. 15

in the technologies involved in patent validity disputes,

there is no reason to believe that the arbitrator would be 

any less so. And, inter partes review does not provide the 

other advantages of arbitration. The harm of failing to defer to a valid arbitration provision is particularly acute

where there are multiple concurrent inter partes reviews, 

which could be, and should be, addressed in a single arbitration proceeding. 

It is not enough to say, as ROHM does, that MaxPower 

may be able to raise its arguments under § 294 after the 

completion of the inter partes reviews. At that point, the 

harm will have been done. And § 314(d) prevents review of 

the Director’s institution decisions on appeal of a final decision just as it prevents interlocutory appeals. MaxPower 

would have to seek a writ of mandamus after the Board’s 

final decision. Any writ this court issued after a final decision would be too little, too late. 

ROHM insinuates that MaxPower should have sought 

relief from the district court by requesting an injunction 

preventing the inter partes reviews from proceeding. 

ROHM does not explain what power a district court overseeing an infringement case would have to compel the 

Board to halt its proceedings over MaxPower’s patents’ validity. If MaxPower were to file a separate breach of contract action and receive an injunction compelling ROHM to 

drop out of the inter partes review proceedings, those proceedings may not necessarily end as “the Patent Office may 

continue to conduct an inter partes review even after the 

adverse party has settled.” Cuozzo Speed Techs., LLC v. 

Lee, 136 S. Ct. 2131, 2144 (2016). Moreover, forcing MaxPower to concurrently litigate in multiple forums is not an 

adequate alternative avenue for relief. If MaxPower’s only 

avenue for relief is to file a breach of contract claim while 

simultaneously defending the validity of its patents in four 

inter partes reviews and litigating ROHM’s appeal of the 

district court’s decision to compel arbitration, it is further 

denied the benefits of its agreement to arbitrate. The 

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16 IN RE: MAXPOWER SEMICONDUCTOR, INC. 

arbitration agreement, rather than streamlining disputes 

between the parties, will have become a tool to multiply 

those disputes.

C. Mandamus Is Appropriate

MaxPower has shown that a writ of mandamus is appropriate under the circumstances. Permitting ROHM to 

avoid arbitration nearly vitiates any agreement to arbitrate disputes over patent validity. If § 294 does not apply 

to inter partes review proceedings, parties to arbitration 

agreements have a route to avoid their responsibilities under those agreements despite the strong federal policy of 

enforcing arbitration agreements. The Board’s decision 

and the majority’s refusal to rectify that decision lead to 

the strange result of a patent challenger being able to bring 

an inter partes review raising the same validity challenges 

that a district court would dismiss pursuant to an arbitration clause.8

The majority’s decision not to grant the writ here, or 

even to stay the inter partes review proceedings so that this 

court can at least hear oral argument, is inconsistent with

the text of § 294 and the Supreme Court’s repeated statements in favor of strong enforcement of arbitration agreements. See AT&T Mobility, 563 U.S. at 346; Buckeye Check 

Cashing, 546 U.S. at 443; Gilmer, 500 U.S. at 25; AT&T

Techs., 475 U.S. at 650; Moses H. Cone, 460 U.S. at 24; 

United Steelworkers, 363 U.S. at 582–83. MaxPower and 

ROHM agreed to take their disputes under the TLA to arbitration. Both Congress and the Supreme Court have 

clearly voiced their support for the enforceability of such 

agreements. And, yet, MaxPower finds itself forced to 

8 Indeed, one district court has already dismissed related claims concerning infringement of the four patents at 

issue in these inter partes reviews. Rohm, 2021 WL 

822932, at *1. 

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IN RE: MAXPOWER SEMICONDUCTOR, INC. 17

argue, many times over, in at least three tribunals, for the 

enforcement of its arbitration agreement and the validity 

of its patents—issues which are properly within the jurisdiction of an arbitrator.

III. CONCLUSION

For the foregoing reasons, I dissent from the majority’s 

denial of mandamus directing the Board to stay or terminate the four inter partes review proceedings pending arbitration. I concur in the majority’s dismissal of Appeal Nos. 

2021-1950, -1951, -1952, and -1953.

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