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No Mandamus to Stay Section 337 Proceedings Pending USPTO Reexamination

By William F. Heinze

In a non-precedential order styled In Re Freescale Semiconductor Inc. (June 25, 2008), the Federal Circuit denied Respondents' petition for writ of mandamus to stay an unfair import investigation at the U.S. International Trade Commission pending the outcome of United States Patent and Trademark Office?s reexamination of patents at issue in the investigation.

In the lower proceedings, the Commission had vacated Administrative law Judge Essex's initial determination granting the stay and ordered the proceedings be reinstated "at the earliest practicable time."

According to the order by Circuit Judge Newman:

The remedy of mandamus is available only in extraordinary situations to correct a clear abuse of discretion or usurpation of judicial power. In re Calmar, Inc., 854 F.2d 461, 464 (Fed. Cir. 1988). A party seeking a writ bears the burden of proving that it has no other means of attaining the relief desired, Mallard v. U.S. Dist. Court for the Southern Dist. of Iowa, 490 U.S. 296, 309 (1989), and that the right to issuance of the writ is "clear and indisputable," Allied Chemical Corp. v. Daiflon, Inc., 449 U.S. 33, 35 (1980). A court may deny mandamus relief "even though on normal appeal, a court might find reversible error." In re Cordis Corp., 769 F.2d 733, 737 (Fed. Cir. 1985).

Freescale has not shown that its right to the writ is clear and indisputable. The Commission provided a sufficient basis for denying the stay. Furthermore, that a petitioner may suffer hardship, inconvenience, or an unusually complex trial does not provide a basis for a court to grant mandamus. See United States v. Watson, 66 C.C.P.A. 107, 603 F.2d 192, 196-97 (1979). Cf. Federal Trade Comm'n v. Standard Oil Co., 449 U.S. 232, 244 (1980) (expenses and burdens of defending action do not constitute irreparable harm). Thus, the petition is denied.

Full post as published by I/P Updates on August 07, 2008 (boomark / email).