Case: 22-166 Document: 17 Page: 1 Filed: 11/22/2022

NOTE: This order is nonprecedential.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. ORDER Knauf Insulation, Inc. and Knauf Insulation SPRL (col- lectively, “Knauf”) petition for a writ of mandamus to in- struct the United States Patent and Trademark Office (“PTO”) to terminate pending ex parte reexamination pro- ceedings. 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. Case: 22-166 Document: 17 Page: 2 Filed: 11/22/2022

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BACKGROUND Under the ex parte reexamination statutory regime, if the Director determines that a petitioner has raised “a sub- stantial 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 in- stitute 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 pre- viously 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. Pa- tent No. 9,926,464 (“the ’464 patent”). In response, Johns Manville filed numerous petitions for post-grant proceed- ings to challenge the patents. With respect to the ’207 pa- tent 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 re- sulted in confirmation of the patentability of the challenged claims. In July 2021, Johns Manville filed two more re- quests 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 re- quests 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 substan- tially the same arguments had been raised in prior pro- ceedings. 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 Man- ville’s prior petitions and requests for post-grant proceed- ings. Knauf further argued that Johns Manville could have Case: 22-166 Document: 17 Page: 3 Filed: 11/22/2022

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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 these proceedings had been in- itially 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 Admin- istration (“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 reexami- nation 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 Pharma- ceutica, 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 de- sired 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 Case: 22-166 Document: 17 Page: 4 Filed: 11/22/2022

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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 man- damus inappropriate. See Vivint, 14 F.4th at 1350–54 (re- viewing 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 ter- minate ongoing reexamination due to “adequate remedy” of an appeal). Knauf argues that absent mandamus relief it will be forced to engage in “unlawful” reexamination pro- ceedings. Pet. at 26. However, “the burden of participating in the proceedings at issue” is typically insufficient to es- tablish entitlement to the exceptional remedy of manda- mus 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 sub- stitute 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 prob- lems 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 deci- sion in Vivint. In that case, we held, on direct appeal after final decision, that the PTO had arbitrarily and capri- ciously 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 case- specific exercise of discretion that the prior art (and argu- ments) 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) Case: 22-166 Document: 17 Page: 5 Filed: 11/22/2022

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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, IT IS ORDERED THAT: (1) The petition is denied. (2) The motion for a stay is denied. FOR THE COURT

November 22, 2022 /s/ Peter R. Marksteiner Date Peter R. Marksteiner Clerk of Court