NOTE: This order is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

In re: KNAUF INSULATION, INC., KNAUF 

INSULATION SPRL,

Petitioners

______________________

2022-166

______________________

On Petition for Writ of Mandamus to the United States 

Patent and Trademark Office in Nos. 90/014,801 and 

90/014,807.

______________________

ON PETITION AND MOTION

______________________ 

Before LOURIE, TARANTO, and STARK, Circuit Judges.

STARK, Circuit Judge.

O R D E R

Knauf Insulation, Inc. and Knauf Insulation SPRL (collectively, “Knauf”) petition for a writ of mandamus to instruct the United States Patent and Trademark Office 

(“PTO”) to terminate pending ex parte reexamination proceedings. Knauf also moves for a stay of the reexamination 

proceedings pending review of its mandamus petition. The 

PTO, as well as Johns Manville Corp. and Johns Manville 

Inc. (collectively, “Johns Manville”), oppose the petition 

and the motion. Knauf replies. 

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2 IN RE: KNAUF INSULATION, INC.

BACKGROUND

Under the ex parte reexamination statutory regime, if 

the Director determines that a petitioner has raised “a substantial new question of patentability” the Director may 

“order . . . reexamination of the patent for resolution of the 

question.” 35 U.S.C. § 304. In determining whether to institute reexamination, the 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.” 35 U.S.C. § 325(d). 

In January 2015, Knauf sued Johns Manville in district 

court, alleging infringement of eight patents, including 

U.S. Patent No. 9,464,207 (“the ’207 patent”) and U.S. Patent No. 9,926,464 (“the ’464 patent”). In response, Johns 

Manville filed numerous petitions for post-grant proceedings to challenge the patents. With respect to the ’207 patent and the ’464 patent, Johns Manville filed petitions for 

inter partes review (“IPR”) in 2018 that were not instituted 

and requests for ex parte reexamination in 2020 that resulted in confirmation of the patentability of the challenged 

claims. In July 2021, Johns Manville filed two more requests for ex parte reexamination of the ’207 and the ’464 

patents presenting grounds that differed from the grounds 

presented in the prior requests for post-grant proceedings. 

The PTO determined that Johns Manville’s most recent requests raised substantial new questions of patentability 

and therefore ordered reexamination. 

Knauf then filed petitions asserting that the decisions 

granting the requests for ex parte reexamination should be 

vacated pursuant to § 325(d) because the same or substantially the same arguments had been raised in prior proceedings. Citing In re Vivint, Inc., 14 F.4th 1342 (Fed. Cir. 

2021), Knauf argued that Johns Manville had engaged in 

undesirable, incremental petitioning, noting Johns Manville’s prior petitions and requests for post-grant proceedings. Knauf further argued that Johns Manville could have 

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IN RE: KNAUF INSULATION, INC. 3

raised the prior art and arguments in its earlier petitions

and requests. Knauf also argued that some of the same 

invalidity issues underlying these proceedings had been initially raised by the examiner during prior reexaminations 

brought by other requesters concerning the grandparent 

application of the patents-at-issue. 

On August 31, 2022, the Office of Patent Legal Administration (“OPLA”), acting on behalf of the Director of the 

PTO, issued two decisions denying Knauf’s petitions. In 

each decision, OPLA focused on the discretionary nature of 

§ 325(d) and the specifics of what had been raised to the 

PTO in prior proceedings and found that the prior art (and 

associated arguments) presented in the present reexamination proceedings were not the same or substantially the 

same as those presented in Johns Manville’s prior petitions

and requests, and noted that these proceedings were the 

first time any third party had presented the arguments

raised by Johns Manville to the PTO regarding these or any 

related patent. 

Knauf then filed this petition for a writ of mandamus

challenging the PTO’s decision and motions for a stay. 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). 

DISCUSSION

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 desired 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 

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4 IN RE: KNAUF INSULATION, INC.

circumstances. Id. at 381. This demanding standard has 

not been met here. 

A post-final decision appeal is an adequate alternative 

to obtain relief based on a § 325(d) challenge, making mandamus inappropriate. See Vivint, 14 F.4th at 1350–54 (reviewing a § 325(d) decision on appeal from the Board’s final 

decision); Automated Merch. Sys., Inc. v. Lee, 782 F.3d 

1376, 1382 (Fed. Cir. 2015) (denying petition seeking to terminate ongoing reexamination due to “adequate remedy” 

of an appeal). Knauf argues that absent mandamus relief

it will be forced to engage in “unlawful” reexamination proceedings. Pet. at 26. However, “the burden of participating 

in the proceedings at issue” is typically insufficient to establish entitlement to the exceptional remedy of mandamus where, as here, the issue may be reviewed in a typical

appeal. Automated Merch., 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 process.”); 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). 

Nor has Knauf shown a clear right to terminate the 

reexaminations under § 325(d) based on this court’s decision in Vivint. In that case, we held, on direct appeal after 

final decision, that the PTO had arbitrarily and capriciously applied § 325(d) when it granted the requester’s 

nearly identical petition for ex parte reexamination based 

on the same arguments raised in a previous IPR petition 

that was denied based on the requester’s abusive filing 

practices. 14 F.4th at 1354. Here, the PTO made a casespecific exercise of discretion that the prior art (and arguments) were not the same or substantially the same as 

those previously presented in other proceedings, which

does not create the same kind of clear, arbitrary departure 

from prior PTO determinations that was at issue in Vivint. 

And whatever the strength of the merits of Knauf’s § 325(d) 

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IN RE: KNAUF INSULATION, INC. 5

challenge to that decision may be in an ordinary appeal, it 

has not shown a clear and indisputable right to mandamus 

relief. 

Accordingly, 

 IT IS ORDERED THAT: 

(1) The petition is denied.

(2) The motion for a stay is denied. 

November 22, 2022

 Date

FOR THE COURT

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court

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