MaxPower Semiconductor, Inc. v. ROHM Semiconductor USA, LLC (In re MaxPower Semiconductor, Inc.)

• Decision Date: 08 September 2021
• Docket Number: 2021-146, 2021-1950, 2021-1951, 2021-1952, 2021-1953
• Citation: 13 F.4th 1348
• Parties: IN RE: MAXPOWER SEMICONDUCTOR, INC., Petitioner MaxPower Semiconductor, Inc., Appellant v. ROHM Semiconductor USA, LLC, Appellee
• Court: U.S. Court of Appeals — Federal Circuit

13 F.4th 1348

IN RE: MAXPOWER SEMICONDUCTOR, INC., Petitioner

MaxPower Semiconductor, Inc., Appellant

v.ROHM Semiconductor USA, LLC, Appellee

2021-146, 2021-1950, 2021-1951, 2021-1952, 2021-1953

United States Court of Appeals, Federal Circuit.

September 8, 2021

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.

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.

Before O'Malley, Reyna, and Chen, Circuit Judges.

Opinion concurring in part and dissenting in part filed by Circuit Judge O'Malley.

ON PETITION

ORDER

Reyna, Circuit Judge.

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.

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 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 , 579 U.S. 261, 136 S. Ct. 2131, 2141–42, 195 L.Ed.2d 423 (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, 122 S.Ct. 754, 151 L.Ed.2d 755 (2002), and Preston v. Ferrer , 552 U.S. 346, 128 S.Ct. 978, 169 L.Ed.2d 917 (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, 128 S.Ct. 978. 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.

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 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 one-page 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

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...