United States Court of Appeals 

for the Federal Circuit ______________________ 

In re: POWER INTEGRATIONS, INC.,

Petitioner

______________________ 

2018-144, 2018-145, 2018-146, 2018-147

______________________ 

On Petitions for a Writ of Mandamus to the United 

States Patent and Trademark Office in Nos. IPR2017-

01903, IPR2017-01904, IPR2017-01944, and IPR2017-

01975. 

______________________ 

Decided: August 16, 2018

______________________ 

 FRANK SCHERKENBACH, Fish & Richardson, PC, 

Boston, MA, for petitioner Power Integrations, Inc. Also 

represented by MICHAEL R. HEADLEY, HOWARD G.

POLLACK, NEIL WARREN, Redwood City, CA; OLIVER 

RICHARDS, JOHN WINSTON THORNBURGH, San Diego, CA. 

 MICHAEL HAWES, Baker Botts, LLP, Houston, TX, for 

respondent Semiconductor Components Industries, LLC. 

Also represented by ROGER FULGHUM; NICHOLAS A.

SCHUNEMAN, BRETT J. THOMPSEN, Austin, TX; LAUREN J.

DREYER, Washington, DC. 

______________________ 

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

BRYSON, Circuit Judge.
2 IN RE: POWER INTEGRATIONS, INC. 

Power Integrations, Inc. (“PI”) has filed petitions for a 

writ of mandamus. The petitions challenge the decisions 

of the Patent Trial and Appeal Board denying the institution of inter partes review of claims from three patents

owned by Semiconductor Components Industries, LLC. 

We deny the petitions. 

I 

 PI filed four petitions with the Patent and Trademark 

Office under 35 U.S.C. § 311(b) requesting inter partes

review of the claims of three issued U.S. patents. The 

patents share a priority date of June 4, 1997. The Board

held that PI had failed to show that any reference cited in 

the petitions was publicly accessible before that date and 

thus determined that the relied-upon references did not 

constitute invalidating prior art.

 The petitions collectively relied on three references. 

The first, Robert A. Mammano, Voltage-Mode Control 

Revisited – A New High-Frequency Controller Features

Efficient Off-Line Performance, 1993 High Frequency 

Power Conversion Conference 40 (May 23–27, 1993) 

(“Mammano”), is a paper prepared by a presenter at the 

High Frequency Power Conversion Conference, held in 

Vienna, Virginia, in 1993. PI submitted a declaration by

Dr. Tamas Szepesi, who testified that he attended the 

conference and received a copy of the Mammano paper “as 

part of the Technical Papers of the Conference.” 

The Board determined that the Mammano paper was 

not a “printed publication” within the meaning of 35 

U.S.C. §§ 102 and 311(b). It found that PI had not provided any evidence that the Virginia conference was 

intended for, or was attended by, persons skilled in the 

relevant art. The Board further found that PI had not 

submitted evidence concerning whether the paper was 

provided to attendees without restriction. In addition, the

Board noted that PI did not argue that Dr. Szepesi was a 

person of ordinary skill in the art and that it failed to 
IN RE: POWER INTEGRATIONS, INC. 3

offer any evidence that Dr. Szepesi had relevant operation 

and fabrication experience at the time of the conference. 

The second reference is a data sheet identified as 

PWR-SMP3 PWM Power Supply IC (“SMP3 Data Sheet”), 

which provides information about one of PI’s products. 

The Board determined that the SMP3 Data Sheet did not 

qualify as a printed publication.

 PI submitted a declaration from its Director of Design 

Engineering, David Kung, stating that he had “personal 

contemporaneous knowledge that copies of this SMP3 

data sheet were published, made available, and distributed to the public in July of 1991, as also indicated by the 

‘7/91’ date code at the bottom of each page of the data 

sheet.” The Board, however, found that the reference 

“bears no obvious indicia of public accessibility”; it “does 

not state plainly the date it was made public[]ly accessible, contain a mailing stamp or address, or include any 

statement of how a member of the public would obtain 

this document.” The Board also pointed out that neither 

the petition nor Mr. Kung’s declaration provided evidence 

that the reference was available to the public or that it 

was PI’s standard practice to make such data sheets 

publicly accessible.

The third reference is a data sheet identified as 

Unitrode UC1828, UC2828, and UC3828 Current Mode 

PWM Controller IC Datasheet, Advanced Information, pp. 

6–190 to 6–196, dated 11/94 (“UC1828 Data Sheet”). As 

in the case of the other two references, the Board found 

that the UC1828 Data Sheet did not qualify as a printed 

publication. 

That reference, which was submitted without a supporting declaration, indicated on its face that it was an 

excerpt from the “Unitrode Integrated Circuits Product & 

Applications Handbook 1995–96” and carried a label, 

seemingly affixed after publication, of Aldridge Associates, Inc., of Eden Prairie, MN. The reference also bore a 
4 IN RE: POWER INTEGRATIONS, INC. 

1995 copyright notice and the assertion that it was 

“Printed in U.S.A.—January 1995.” 

 The Board found that PI’s petition failed to identify 

the circumstances of the reference’s dissemination or how 

interested persons of ordinary skill in the relevant art 

could locate the reference. The Board found that the 

dates on the face of the reference were at best circumstantial evidence of its publication. The Board also noted that 

PI did not rely on the copyright notice as evidence of the 

reference’s public accessibility. 

Having found that none of the references were shown 

to be prior art, the Board concluded that PI had failed to 

show it was likely to prevail in its challenges to the patentability of the claims in issue, and it therefore denied 

the petitions in four detailed written decisions. PI sought 

rehearing in each case. The Board denied the requests for 

rehearing, filing in each case a detailed opinion explaining its decision. 

II

Section 314(a) of Title 35 specifies that “[t]he Director 

may not authorize an inter partes review to be instituted 

unless the Director determines that . . . there is a reasonable likelihood that the petitioner would prevail with 

respect to at least 1 of the claims challenged in the petition.” Section 314(c), entitled “Notice,” provides that 

“[t]he Director shall notify the petitioner and patent 

owner, in writing, of the Director’s determination under 

subsection (a), and shall make such notice available to the 

public as soon as is practicable.” Section 314(d), entitled 

“No Appeal,” adds that “[t]he determination by the Director whether to institute an inter partes review under this 

section shall be final and nonappealable.” 

In Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 

2131 (2016), the Supreme Court held that section 314(d) 

bars review of a Board decision to institute inter partes 
IN RE: POWER INTEGRATIONS, INC. 5

review except in unusual circumstances, such as when an 

appeal implicates constitutional questions or presents 

“other questions of interpretation that reach, in terms of 

scope and impact, well beyond” section 314(d). Id. at 

2141. In the case of “an ordinary dispute about the application of certain relevant patent statutes concerning the 

Patent Office’s decision to institute inter partes review,” 

the Court ruled that section 314(d) would preclude review. 

Id. at 2139; see id. at 2142. Although the Cuozzo case 

involved an appeal from a decision to institute inter 

partes review, the Court made it clear that its analysis 

would apply equally to an attempt to appeal from a decision denying institution. See id. at 2140 (“[T]he agency’s 

decision to deny a petition is a matter committed to the 

Patent Office’s discretion.”);1 see also Saint Regis Mohawk 

Tribe v. Mylan Pharms. Inc., Nos. 2018-1638 et al., slip 

op. at 8 (Fed. Cir. July 20, 2018) (“If the Director decides 

not to institute, for whatever reason, there is no review. 

In making this decision, the Director has complete discretion to decide not to institute review.” (citing Oil States 

Energy Servs. v. Greene’s Energy Group, LLC, 138 S. Ct. 

1365, 1371 (2018)). 

Faced with that statutory prohibition on appeal, PI 

does not directly appeal the Board’s determinations not to 

institute inter partes review. Instead, PI seeks to obtain 

review of the non-institution decisions through petitions 

for mandamus covering all four of the Board’s orders. But 

a writ of mandamus is not intended to be simply an 

 

1 Even Justice Alito, dissenting in Cuozzo, made 

clear that his dissent was limited to review of decisions to 

institute inter partes review as part of the review of a 

final decision in the case; he acknowledged that his interpretation of the statute would not ordinarily permit 

review of decisions not to institute inter partes review. 

Cuozzo, 136 S. Ct. at 2153 n.6 (Alito, J., dissenting).
6 IN RE: POWER INTEGRATIONS, INC. 

alternative means of obtaining appellate relief, particularly where relief by appeal has been specifically prohibited 

by Congress. See Roche v. Evaporated Milk Ass’n, 319 

U.S. 21, 26 (1943) (Mandamus may not “be used merely as 

a substitute for the appeal procedure prescribed by the 

statute”); In re Pollitz, 206 U.S. 323, 331 (1907) (Mandamus “cannot . . . be used to perform the office of an appeal.”). To obtain the remedy of mandamus, a party must 

show that its right to issuance of the writ is “clear and 

indisputable,” and that there are no adequate alternative 

legal channels through which it may obtain that relief. 

Moreover, “even if the first two prerequisites have been 

met, the issuing court, in the exercise of its discretion, 

must be satisfied that the writ is appropriate under the 

circumstances.” Cheney v. U.S. Dist. Court for the Dist. of 

Columbia, 542 U.S. 367, 380–81 (2004); see also Kerr v. 

U.S. Dist. Court for the N. Dist. of Cal., 426 U.S. 394, 403 

(1976). 

We hold that mandamus does not lie in this case, both 

because PI has not shown a clear and indisputable right 

to issuance of the writ and because relief by way of mandamus would not be appropriate here. We have held that 

the statutory prohibition on appeals from decisions not to 

institute inter partes review cannot be sidestepped simply 

by styling the request for review as a petition for mandamus. In re Dominion Dealer Sols., LLC, 749 F.3d 1379, 

1381 (Fed. Cir. 2014); see also Medtronic, Inc. v. Robert 

Bosch Healthcare Sys., Inc., 839 F.3d 1382, 1386 (Fed. 

Cir. 2016); GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 

1312–13 (Fed. Cir. 2015) (same analysis as applied to 

“covered business method” review proceedings). 

 PI seeks to avoid that authority by claiming that it is 

not attempting to obtain review of the Board’s noninstitution decision. Instead, PI claims, it is seeking to 

vindicate its rights under the Administrative Procedure 

Act (“APA”) to a reasoned decision by the agency based on 
IN RE: POWER INTEGRATIONS, INC. 7

a proper consideration of all the relevant evidence in its 

petitions and application of the correct legal principles. 

With respect to the claim that the Board did not 

provide an adequate explanation for its non-institution 

decisions, PI relies on section 6(d) of the APA, codified at 

5 U.S.C. § 555(e). That statute requires agencies to 

provide a “[p]rompt notice” of the denial “of a written 

application, petition, or other request of an interested 

person made in connection with any agency proceeding,” 

and a “brief statement of the grounds for denial,” unless 

the denial is “self-explanatory.” The cases applying that 

statute explain that the required statement “not only 

ensures the agency’s careful consideration of such requests, but also give parties the opportunity to apprise 

the agency of any errors it may have made and, if the 

agency persists in its decision, facilitates judicial review.” 

Tourus Records, Inc. v. Drug Enforcement Admin., 259 

F.3d 731, 737 (D.C. Cir. 2001); Butte Cty. v. Hogen, 613 

F.3d 190, 194 (D.C. Cir. 2010); Roelofs v. Sec’y of the Air 

Force, 628 F.2d 594, 599–601 (D.C. Cir. 1980). The purpose of facilitating review does not apply in this case, 

however, because this court has no reviewing authority 

over the agency’s non-institution decision. See Cuozzo, 

136 S. Ct. at 2139. Also inapplicable are the purposes of 

ensuring careful consideration by the agency and enabling 

the affected party to apprise the agency of its errors, as 

the Board’s explanations for its actions were detailed, and 

PI was able to challenge those explanations in its requests 

for rehearing. 

The notice required of an agency under the APA “is 

modest.” Roelofs, 628 F.2d at 601. All that is required is 

that the agency “explain why it decided to act as it did.” 

Butte, 613 F.3d at 194. Here, we cannot say that the 

Board clearly and indisputably failed to fulfill that obligation. The Board issued four decisions, each from 15 to 20 

pages long, supplemented by four substantive decisions on 

rehearing, in which the Board explained in detail why it 
8 IN RE: POWER INTEGRATIONS, INC. 

concluded that the Mammano, SMP3 Data Sheet, and 

UC1828 Data Sheet references had not been shown to be 

publicly accessible before the priority date. There is thus 

no merit to PI’s argument that mandamus is appropriate 

because of a wholesale failure by the Board to explain its 

non-institution decisions.

At bottom, PI’s request for more elaborate “notice” of 

the reasons for the Board’s actions is really just the 

camel’s nose under the tent. PI’s real complaint is not 

that the Board did not explain itself well enough for PI to 

understand what the Board did. PI understands perfectly 

well what the Board did, but it regards the Board’s actions as legally and factually incorrect, and it seeks this 

court’s intervention to overturn the Board’s decisions not 

to institute inter partes review. What PI ultimately 

wants is not just to be given a more complete explanation 

of the Board’s action, but for this court to review that 

decision on the merits.

That much is clear from the petition, in which PI 

argues that the “brief statement of the grounds for denial” 

in section 6(d) of the APA requires that the agency’s 

statement be “the product of reasoned decisionmaking,” 

Pet. 22, and that an agency decision that “is premised on 

an incorrect legal standard or a misapplication of that 

standard” cannot be one of reasoned decision-making, id.

at 24. From those premises, PI proceeds to challenge the 

Board’s decisions on the merits and argues this court 

should entertain its merits-based challenge in this mandamus proceeding. 

 That analysis runs head-on into the Supreme Court’s 

decision in Cuozzo and this court’s decision in In re Dominion Dealer Solutions, LLC. The Supreme Court in 

Cuozzo determined that Congress intended to bar appellate review of institution decisions, at least when a patent 

holder merely challenges the Board’s determination 

regarding whether the information presented in the 
IN RE: POWER INTEGRATIONS, INC. 9

petition shows that there is a reasonable likelihood of 

success or “where a patent holder grounds its claim in a 

statute closely related to” the decision whether to institute inter partes review. 136 S. Ct. at 2142. Cuozzo’s 

claim, the Court noted, “is little more than a challenge to 

the Patent Office’s conclusion, under § 314(a), that the 

‘information presented in the petition’ warranted review.” 

Id.

The same is true here. The essence of PI’s claim—

that the Board’s analysis “is premised on an incorrect 

legal standard or a misapplication of that standard”—is 

nothing more than a challenge to the Board’s conclusion 

that the information presented in the petitions did not 

warrant review. And in Dominion Dealer Solutions, this 

court made clear that where section 314(d) bars an appeal 

from a Board decision not to institute inter partes review, 

the petitioning party “has no ‘clear and indisputable’ right 

to challenge [the] non-institution decision directly in this 

court, including by way of mandamus.” 749 F.3d at 1381.

Similar analysis applies to PI’s procedural complaints 

that the Board ignored key evidence, “applied an overly 

rigid legal standard for public availability,” and improperly required it to “definitively prove [public availability] in 

its petition rather than evaluating whether PI would be 

reasonably likely to do so after full development of the 

factual record.” Pet. 19–20. Those are precisely the kinds 

of claims that would form the basis for an appellate 

challenge to the Board’s non-institution decision if such a 

challenge were authorized. For this court to entertain 

such claims in response to a petition for mandamus would 

convert the mandamus procedure into a transparent 

means of avoiding the statutory prohibition on appellate 

review of agency institution decisions. 

A disappointed petitioner cannot by-pass the statutory bar on appellate review simply by directing its challenge to asserted procedural irregularities rather than to 
10 IN RE: POWER INTEGRATIONS, INC. 

the substance of the non-institution ruling. Nothing in 

section 314(d) suggests that the prohibition on review 

applies only to the merits of the Board’s non-institution 

decisions and leaves this court free to review the Board’s 

decisions for perceived flaws in the way the Board analyzed the evidence before it. To draw such a distinction 

would inevitably lead to this court’s examination of the 

correctness of the Board’s legal and factual conclusions; 

i.e., it would result in this court’s review of the legal and 

factual bases of the Board’s non-institution decisions, 

which is just what Congress sought to prohibit.

This is not to say that mandamus will never lie in 

response to action by the agency relating to the noninstitution of inter partes review. The circumstances 

described by the Supreme Court in Cuozzo as illustrations 

of issues for which an appeal might be justified (e.g., 

constitutional issues, issues involving questions outside 

the scope of section 314(d), and actions by the agency 

beyond its statutory limits) would be potential candidates 

for mandamus review as well. See Cuozzo, 136 S. Ct. at 

2141–42; SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359 

(2018). But this case involves no issues extraneous to the 

application of patent law principles of unpatentability

based on printed publications, nor does it involve any 

“shenanigans” on the part of the Board that might justify 

appellate review or review by mandamus. See id. at 2142; 

see also SAS, 138 S. Ct. at 1359. 

As with its argument about an inadequate explanation for the Board’s actions, PI’s complaints about the 

Board’s factual and legal analysis and its procedural 

objections to the Board’s rulings are designed to obtain a 

ruling from this court that will ultimately result in overturning the Board’s non-institution decision. And, as to 

that relief, the bar to appeal is fatal, at least absent some 

grave abuse of the statutory procedure that has not been

shown to be present here. 
IN RE: POWER INTEGRATIONS, INC. 

11

Accordingly,

 IT IS ORDERED THAT: 

The petitions are denied.