Case: 22-161 Document: 11 Page: 1 Filed: 11/22/2022

NOTE: This order is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

In re: SOUND VIEW INNOVATIONS, LLC, Petitioner ______________________

2022-161 ______________________

On Petition for Writ of Mandamus to the United States Patent and Trademark Office in No. 90/015,011. ______________________

ON PETITION ______________________

Before LOURIE, TARANTO, and STARK, Circuit Judges. STARK, Circuit Judge. ORDER Sound View Innovations, LLC petitions for a writ of mandamus to vacate the United States Patent and Trade- mark Office’s (“PTO”) order granting a request for ex parte reexamination and to remand with instructions to termi- nate proceedings. The Director of the PTO opposes the pe- tition. Sound View replies. We deny the petition. BACKGROUND Sound View is the owner of U.S. Patent No. 6,708,213 (“the ’213 patent”), which relates to caching of streaming multimedia data from a content provider over a network to Case: 22-161 Document: 11 Page: 2 Filed: 11/22/2022

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a client’s computer. In 2019, Sound View filed a patent in- fringement suit against DISH Network L.L.C., DISH Tech- nologies, L.L.C., and Sling TV L.L.C. (collectively, “DISH”). In 2020, DISH petitioned the PTO for inter partes review (“IPR”), arguing that claim 16 of the ’213 patent was antic- ipated and/or obvious based on two references: Sen and Geagan. * The Patent Trial and Appeal Board denied the petition, finding no reasonable likelihood of prevailing on those challenges. In particular, the Board determined that DISH had not shown a reasonable likelihood that Sen and Geagan taught the claimed step of “adjusting a data trans- fer rate,” DISH Network LLC v. Sound View Innovations, LLC, No. IPR2020-00969, 2020 WL 6951823, at *13 (P.T.A.B. Nov. 25, 2020). Five months later, DISH requested ex parte reexami- nation of claim 16 of the ’213 patent based on Sen and Geagan in combination with a new reference, Zheng, which DISH alleged “discloses adjusting a data rate, to the extent that adjusting a data transfer rate is not disclosed by the combination of Sen and Geagan.” Appx029. In response, Sound View petitioned the PTO to reject DISH’s reexami- nation request under 35 U.S.C. § 325(d), arguing that the reexamination request raised “substantially the same” art or arguments that were raised by DISH in the prior IPR petition. Appx137 (quoting the language of § 325(d)). On June 16, 2022, the examiner granted DISH’s re- quest and ordered reexamination of claim 16, determining that the combination of Sen, Geagan, and Zheng raised a substantial new question of patentability with respect to

* Hulu, LLC and Walmart Inc. et al. also filed sepa- rate IPR petitions challenging the same patent. The PTO denied institution based on Hulu’s petition, which relied on different prior art than in DISH’s petition. Walmart et al.’s petition also relied on the Sen reference, but those parties settled before the PTO issued a decision on institution. Case: 22-161 Document: 11 Page: 3 Filed: 11/22/2022

IN RE: SOUND VIEW INNOVATIONS, LLC 3

claim 16. In rejecting Sound View’s § 325(d) arguments, which were based on this court’s decision in In re Vivint, Inc., 14 F.4th 1342 (Fed. Cir. 2021), the examiner found that the reexamination petition was based on different grounds than DISH’s prior IPR petition that was denied and the “requester has not presented serial challenges to the ’213 patent, other than the single prior IPR petition.” Appx014. Sound View then filed this mandamus petition challenging that decision. 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). 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 circum- stances. Id. at 381. This demanding standard has not been met here. Mandamus relief is unavailable because a post-final decision appeal is an adequate remedy by which Sound View may seek to obtain relief based on its § 325(d) chal- lenge. See Vivint, 14 F.4th at 1350–54 (reviewing a § 325(d) challenge following appeal from the Board’s final decision); see also Automated Merch. Sys., Inc. v. Lee, 782 F.3d 1376, 1382 (Fed. Cir. 2015) (denying petition seeking to terminate ongoing reexamination due to “adequate rem- edy” of an appeal). Sound View argues that it will be forced to endure a wasteful and burdensome validity challenge to achieve meaningful judicial review. However, “the burden Case: 22-161 Document: 11 Page: 4 Filed: 11/22/2022

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of participating in the proceedings at issue” is typically in- sufficient to establish entitlement to the exceptional rem- edy of mandamus where, as here, the issue may be reviewed in a typical appeal. Automated Merch. Sys., 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 pro- cess.”); 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). Moreover, without drawing any definitive conclusion, we cannot say that Sound View has shown a clear and in- disputable right to terminate the reexamination proceed- ings under § 325(d). The examiner concluded that the addition of the Zheng reference presented different argu- ments that addressed in a different way the claimed limi- tation the Board found petitioner had not shown to be present in the reference combination underlying the earlier IPR petition. Appx012–013. That determination has not been shown by Sound View to be so clearly contrary to the law or the record as to warrant mandamus. Sound View’s reliance on our decision in Vivint does not change that calculus. In that case, we held, on direct ap- peal after a final decision, that the PTO had arbitrarily and capriciously applied § 325(d) when it granted the re- quester’s nearly identical request for ex parte reexamina- tion based on the same arguments raised in its previous IPR petition that was denied based on the requester’s abu- sive filing practices. 14 F.4th at 1354. Here, the PTO’s decision to allow the reexamination to proceed was a case- specific exercise of discretion that does not create the same kind of clear, arbitrary departure from prior agency deci- sions that was at issue in Vivint. And whatever the strength of the merits of Sound View’s § 325(d) challenge to that decision may be in an ordinary appeal, it has not shown a clear and indisputable right to mandamus relief. Case: 22-161 Document: 11 Page: 5 Filed: 11/22/2022

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Accordingly, IT IS ORDERED THAT: The petition is denied. FOR THE COURT

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