N OTE : This order is nonprecedential

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# United States **Court of Appeals**  **for the Federal Circuit**

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In re : KNAUF INSULATION, INC., KNAUF INSULATION SPRL, Petitioners

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2022

- 166

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On Petition for Writ of Mandamus to the United States Patent and Trademark Office in No s . 90/014,801 and 90/014,807.

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ON PETITION AND MOTION

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Before L OURIE , T ARANTO , and S TARK , Circuit Judges

. S TARK , 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 part e 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. (collective ly , “Johns Manville”), oppose the petition and the motion. Knauf replies. Case: 22-166 Document: 17 Page: 1 Filed: 11/22/2022IN RE : KNAUF INSULATION
, INC

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B ACKGROUND

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. I n determining whether to institute reexam ination , the Director “ may take into account whether, and reject the petition or request because, thesame or substantially the same prior art or arguments previo usly were presented to the Office. ” 35 U.S.C. § 325(d).

In January 201 5

, Knauf sued Johns Manville in district court, alleging infringement of eight patents, includingU.S. Patent No. 9,464,207 (“the ’207 patent”) and U.S. Patent No. 9,926,464 (“the ’46 4 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 no t 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 ree xamination.

Knauf then filed petition s asserting that the decisions granting the request s 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. C itin g 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 Ma nville could have Case: 22-166 Document: 17 Page: 2 Filed: 11/22/2022IN RE : KNAUF INSULATION
, INC

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raised the prior art and arguments in its earlier petitions and requests . Knauf also argued that some of the same invalidity issues underlying the se 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, t he Office of Patent Legal Administration (“OPLA”) , acting on behalf of the Director of the PTO, issued two dec isions 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 pre sent reexamination proceedings were not the same or substantially the same as those presented in Johns Manville’s prior petitions and requests

, and not ed 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).

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 desired relief and ha s 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 Case: 22-166 Document: 17 Page: 3 Filed: 11/22/2022IN RE : KNAUF INSULATION
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circumstances. Id . at 381. This demanding standard has not b een 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”

o f a n appeal). Knauf argues that absent mandamus r elief it will be forced to engage in “unlaw ful” 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 reexamination s under § 325(d) based on this court’s decision in Vivint

. I n 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 w as denied based on the requester’s abusive filing practices. 14 F.4th at 1354. Here, the PTO made a case

specific 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 d eterminations that was at issue in Vivint

. And whatever the strength of the merits of Knauf’s § 325(d) Case: 22-166 Document: 17 Page: 4 Filed: 11/22/2022IN RE : KNAUF INSULATION
, INC

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challenge to that decision may be in an ordinary appeal, it has not shown a clear and indisputable right to mandamus relief.
Accordingly

, I T I S O RDERED T HAT : (1) The petition is denied.
(2) The motion for a stay is denied.

November 22 , 2022 Date F OR THE C OURT

/s/ Peter R. Marksteiner Peter R. Marksteiner Clerk of Court Case: 22-166 Document: 17 Page: 5 Filed: 11/22/2022