In Re MAXPOWER SEMICONDUCTOR, INC. ( 2021 )

Case: 21-146 Document: 19 Page: 1 Filed: 09/08/2021
United States Court of Appeals
for the Federal Circuit
______________________
In re: MAXPOWER SEMICONDUCTOR, INC.,
Petitioner
______________________
2021-146
______________________
On Petition for Writ of Mandamus to the United States
Patent and Trademark Office in Nos. IPR2020-01674,
IPR2020-01675, IPR2020-01676, and IPR2020-01677.
______________________
ROGER L. COOK, Roger Cook Law, San Francisco, CA,
for petitioner MaxPower Semiconductor, Inc. Also repre-
sented 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.
--------------------------------------------------
MAXPOWER SEMICONDUCTOR, INC.,
Appellant
v.
ROHM SEMICONDUCTOR USA, LLC,
Appellee
______________________
Case: 21-146 Document: 19 Page: 2 Filed: 09/08/2021
2 IN RE: MAXPOWER SEMICONDUCTOR, INC.
2021-1950, 2021-1951, 2021-1952, 2021-1953
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2020-
01674, IPR2020-01675, IPR2020-01676, and IPR2020-
01677.
______________________
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.
______________________
ON PETITION
______________________
Before O’MALLEY, REYNA, and CHEN, Circuit Judges.
Order for the court filed by Circuit Judge REYNA.
Opinion concurring in part and dissenting in part filed by
Circuit Judge O’MALLEY.
REYNA, Circuit Judge.
ORDER
MaxPower Semiconductor, Inc. (“MaxPower”) directly
appeals the Patent Trial and Appeal Board’s (“Board”) de-
terminations to institute inter partes review proceedings,
which involve four MaxPower patents. MaxPower alterna-
tively seeks a writ of mandamus to review those decisions.
Case: 21-146 Document: 19 Page: 3 Filed: 09/08/2021
IN RE: MAXPOWER SEMICONDUCTOR, INC. 3
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 Phar-
maceutica, 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) in-
corporates 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 im-
mediate 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 impli-
cates questions of whether the Board can institute proceed-
ings 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 sec-
tion 314(d) (an issue we need not decide here), then Max-
Power can meaningfully raise its arbitration-related
challenges after the Board’s final written decisions. We
therefore cannot say that MaxPower has established juris-
diction 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 un-
reviewable after final judgment under the collateral order
doctrine).
We likewise reject MaxPower’s argument that its ap-
peals are authorized under 9 U.S.C. § 16(a)(1). That
Case: 21-146 Document: 19 Page: 4 Filed: 09/08/2021
4 IN RE: MAXPOWER SEMICONDUCTOR, INC.
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 ar-
bitration to proceed,” “denying an application under sec-
tion 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 deci-
sions.” In re Power Integrations, Inc., 899 F.3d 1316, 1321
(Fed. Cir. 2018). MaxPower readily admits, “This manda-
mus 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 unavaila-
bility 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 au-
thority to grant a petition to institute IPR); Power Integra-
tions, 899 F.3d at 1321 (citing Cuozzo Speed Techs., LLC v.
Lee, 136 S. Ct. 2131, 2141–42 (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 (2002), and
Case: 21-146 Document: 19 Page: 5 Filed: 09/08/2021
IN RE: MAXPOWER SEMICONDUCTOR, INC. 5
Preston v. Ferrer, 552 U.S. 346 (2008), are not cited any-
where 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 com-
ply 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 fo-
rum. Id. at 359. We do not see, then, how the Board’s ac-
tion 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 dis-
missed.
(2) MaxPower’s mandamus petition (ECF No. 2 in No.
2021-146) is denied.
(3) Each side shall bear its own costs.
FOR THE COURT
September 8, 2021 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
1 Moreover, although we need not go through the
mandamus framework, we note that MaxPower fails to
show it has no other avenue of relief, as MaxPower remains
free to ask the courts to enjoin ROHM from proceeding with
the inter partes reviews. See, e.g., Dodocase VR, Inc. v.
MerchSource, LLC, 767 F. App’x 930 (Fed. Cir. 2019) (af-
firming a preliminary injunction ordering petitioner to
withdraw its inter partes petitions due to a forum selection
clause in the parties’ contract).
Case: 21-146 Document: 19 Page: 6 Filed: 09/08/2021
United States Court of Appeals
for the Federal Circuit
______________________
In re: MAXPOWER SEMICONDUCTOR, INC.,
Petitioner
______________________
2021-146
______________________
On Petition for Writ of Mandamus to the United States
Patent and Trademark Office in Nos. IPR2020-01674,
IPR2020-01675, IPR2020-01676, and IPR2020-01677.
-------------------------------------------------
MAXPOWER SEMICONDUCTOR, INC.,
Appellant
v.
ROHM SEMICONDUCTOR USA, LLC,
Appellee
______________________
2021-1950, 2021-1951, 2021-1952, 2021-1953
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2020-
01674, IPR2020-01675, IPR2020-01676, and IPR2020-
01677.
______________________
ON PETITION
Case: 21-146 Document: 19 Page: 7 Filed: 09/08/2021
2 IN RE: MAXPOWER SEMICONDUCTOR, INC.
______________________
O’MALLEY, Circuit Judge, concurring-in-part and dissent-
ing-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 agree-
ments to arbitrate patent validity shall be “valid, irrevoca-
ble, 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 fa-
voring 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 tech-
nology 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
Case: 21-146 Document: 19 Page: 8 Filed: 09/08/2021
IN RE: MAXPOWER SEMICONDUCTOR, INC. 3
September 2020, MaxPower notified ROHM Japan of its
intent to initiate arbitration in thirty days. Shortly there-
after, on September 23, 2020, ROHM Semiconductor USA,
LLC (“ROHM USA” or “ROHM”), a wholly owned subsidi-
ary of ROHM Japan, filed a complaint for declaratory judg-
ment 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 “unmis-
takably delegate[s] the question of arbitrability to the arbi-
trator.” 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
1 Complaint for Declaratory Judgment of Non-In-
fringement, ROHM Semiconductor USA, LLC v. MaxPower
Semiconductor, Inc., No. 20-cv-06686-VC (N.D. Cal. filed
Sep. 23, 2020), ECF No. 1; Petition for Inter Partes Review
of United States Patent No. 7,843,004, ROHM Semicon-
ductor USA, LLC v. MaxPower Semiconductor, Inc.,
IPR2020-01674 (P.T.A.B. filed Sep. 23, 2020), Paper No. 1;
Petition for Inter Partes Review of United States Patent
No. 8,076,719, ROHM Semiconductor USA, LLC v. Max-
Power Semiconductor, Inc., IPR2020-01675 (P.T.A.B. filed
Sep. 23, 2020), Paper No. 1; Petition for Inter Partes Review
of United States Patent No. 8,466,025, ROHM Semicon-
ductor USA, LLC v. MaxPower Semiconductor, Inc.,
IPR2020-01676 (P.T.A.B. filed Sep. 23, 2020), Paper No. 1;
Petition for Inter Partes Review of United States Patent
No. 8,659,076, ROHM Semiconductor USA, LLC v. Max-
Power Semiconductor, Inc., IPR2020-01677 (P.T.A.B. filed
Sep. 23, 2020), Paper No. 1.
2 ROHM appealed that decision to this court in Case
No. 21-1709, which is currently pending.
Case: 21-146 Document: 19 Page: 9 Filed: 09/08/2021
4 IN RE: MAXPOWER SEMICONDUCTOR, INC.
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 insti-
tution.” 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 patenta-
bility falls within the scope of the agreement to arbitrate is
committed to the arbiter” there is no “statute, rule, or pol-
icy that would preclude the Office from acting on the Peti-
tion.” Id. at 11. The Board rejected MaxPower’s argument
that 35 U.S.C. § 294 applies to inter partes review proceed-
ings 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 fur-
ther found that any issues related to the TLA are beyond
the Board’s mandate as they are issues of contractual in-
terpretation. In a footnote, the Board compared the arbi-
tration issue to cases in which this court found that state
sovereign immunity and tribal immunity are “not impli-
cated” in inter partes review proceedings.
MaxPower filed four interlocutory appeals of the
Board’s institution decisions. MaxPower Semiconductor,
Inc. v. ROHM Semiconductor USA, LLC, Nos. 21-1950,
21-1951, 21-1952, 21-1953 (Fed. Cir. docketed May 14,
2021) (consolidated under No. 21-1950). I concur in the
majority’s dismissal of those appeals because 35 U.S.C.
§ 314(d) provides that “[t]he determination by the Director
3 All citations are to the Board’s institution decision
in IPR2020-01674. The Board’s discussion of the arbitra-
tion issue appears to be identical in all four institution de-
cisions.
4 Section 294 is in Chapter 29, which concerns civil
actions rather than administrative actions.
Case: 21-146 Document: 19 Page: 10 Filed: 09/08/2021
IN RE: MAXPOWER SEMICONDUCTOR, INC. 5
whether to institute an inter partes review under this sec-
tion shall be final and nonappealable.”
MaxPower also sought a writ of mandamus. MaxPower
Semiconductor, Inc. v. ROHM Semiconductor USA, LLC,
No. 21-146 (Fed. Cir. docketed May 14, 2021). It asked this
court to stay or terminate the inter partes review proceed-
ings without prejudice to later institution if an arbitrator
decides that inter partes review proceedings are appropri-
ate. The majority denies that request without even con-
ducting oral argument on this question of first impression.
I dissent.
II. DISCUSSION
I believe that mandamus is warranted. At the very
least, I believe that this important issue of first impression
deserves oral argument with the four inter partes review
proceedings stayed pending our decision.
In this court’s recent decision in Mylan, we held that,
“[w]hile there is no avenue for direct appeal of decisions
denying institution, . . . judicial review is available in ex-
traordinary circumstances by petition for mandamus.”
Mylan Lab'ys Ltd. v. Janssen Pharmaceutica, N.V., 989
F.3d 1375, 1379 (Fed. Cir. 2021). While we did not grant a
writ of mandamus in that case, we noted that we “need not
decide whether any petition for writ of mandamus chal-
lenging the Patent Office’s grant of institution could ever
be meritorious.” Id. at 1382 n.5 (emphasis in original). We
further recognized that decisions granting institution are
fundamentally different from denials because a patentee
has much more to lose from a grant than a challenger may
lose from a denial. Id. (citing Cuozzo Speed Techs., LLC v.
Lee, 136 S. Ct. 2131, 2153 n.6 (2016) (Alito, J., concurring-
in-part and dissenting-in-part)).
To show that it is entitled to a writ of mandamus, Max-
Power must “(1) show that it has a clear and indisputable
legal right; (2) show it does not have any other adequate
Case: 21-146 Document: 19 Page: 11 Filed: 09/08/2021
6 IN RE: MAXPOWER SEMICONDUCTOR, INC.
method of obtaining relief; and (3) convince the court that
the writ is appropriate under the circumstances.” Id. at
1382. This case provides exactly the sort of extraordinary
circumstances under which mandamus review is appropri-
ate.
A. Clear and Indisputable Legal Right
MaxPower has a clear and indisputable legal right to
enforcement of the TLA’s arbitration provision. Section
294 confirms as much when it states that arbitration pro-
visions relating to patent validity “shall be valid, irrevoca-
ble, and enforceable, except for any grounds that exist at
law or in equity for revocation of a contract.” 35 U.S.C.
§ 294(a).
The Supreme Court’s repeated pronouncements of the
“liberal federal policy favoring arbitration agreements” un-
der the Federal Arbitration Act (“FAA”), 9 U.S.C. § 2, fur-
ther confirm MaxPower’s right to arbitration. See AT&T
Mobility LLC v. Concepcion, 563 U.S. 333, 346 (2011) (quot-
ing Moses H. Cone Mem'l Hosp. v. Mercury Constr. Corp.,
460 U.S. 1, 24 (1983)); see also Buckeye Check Cashing, Inc.
v. Cardegna, 546 U.S. 440, 443 (2006); Gilmer v. Inter-
state/Johnson Lane Corp., 500 U.S. 20, 25 (1991); AT&T
Techs., Inc. v. Commc'ns Workers of Am., 475 U.S. 643, 650
(1986); United Steelworkers of Am. v. Warrior & Gulf Nav.
Co., 363 U.S. 574, 582–83 (1960). The Supreme Court has
held that “any doubts concerning the scope of arbitrable is-
sues should be resolved in favor of arbitration.” Moses H.
Cone, 460 U.S. at 24–25.
The Board did not resolve “any doubts concerning the
scope of arbitrable issues . . . in favor of arbitration.” See
id. It did the opposite. It found that, even if there are no
doubts about the applicability of the arbitration provision,
there is no “statute, rule, or policy that would preclude” it
from instituting inter partes review. Decision Granting In-
stitution at 11, Rohm, IPR2020-01674, Paper No. 14.
Case: 21-146 Document: 19 Page: 12 Filed: 09/08/2021
IN RE: MAXPOWER SEMICONDUCTOR, INC. 7
Contrary to the Board’s assertions, the strong “federal
policy favoring arbitration agreements” embodied in the
FAA and in 35 U.S.C. § 294 applies to the Board just as it
applies to federal courts. Although no cases have yet ad-
dressed whether § 294 applies in inter partes reviews, Su-
preme Court cases considering the FAA indicate that § 294
should apply in those proceedings.
Cases addressing section 2 of the FAA are applicable to
cases concerning 35 U.S.C. § 294. Section 294 was enacted
in 1982 to “allow parties to make the enforcement provi-
sions of the Federal Arbitration Act . . . applicable to patent
contracts.” Flex-Foot, Inc. v. CRP, Inc., 238 F.3d 1362, 1365
(Fed. Cir. 2001). As a result, “[t]he FAA is applicable to
settlement and license agreements involving patents.” Mi-
crochip Tech. Inc. v. U.S. Philips Corp., 367 F.3d 1350,
1354 (Fed. Cir. 2004). Further, 9 U.S.C. § 2 and 35 U.S.C
§ 294(a) have nearly identical language. 9 U.S.C. § 2 states
that:
A written provision in any maritime transaction or
a contract evidencing a transaction involving com-
merce to settle by arbitration a controversy there-
after arising out of such contract or transaction, or
the refusal to perform the whole or any part
thereof, or an agreement in writing to submit to ar-
bitration an existing controversy arising out of
such a contract, transaction, or refusal, shall be
valid, irrevocable, and enforceable, save upon such
grounds as exist at law or in equity for the revoca-
tion of any contract.
9 U.S.C. § 2 (emphasis added).
Similarly, 35 U.S.C. § 294(a) states:
A contract involving a patent or any right under a
patent may contain a provision requiring arbitra-
tion of any dispute relating to patent validity or in-
fringement arising under the contract. In the
Case: 21-146 Document: 19 Page: 13 Filed: 09/08/2021
8 IN RE: MAXPOWER SEMICONDUCTOR, INC.
absence of such a provision, the parties to an exist-
ing patent validity or infringement dispute may
agree in writing to settle such dispute by arbitra-
tion. Any such provision or agreement shall be
valid, irrevocable, and enforceable, except for any
grounds that exist at law or in equity for revocation
of a contract.
35 U.S.C. § 294(a) (emphasis added).
Finally, 35 U.S.C. § 294 expressly incorporates certain
provisions of the FAA in § 294(b):
Arbitration of such disputes, awards by arbitrators
and confirmation of awards shall be governed by ti-
tle 9, to the extent such title is not inconsistent
with this section.
Two Supreme Court cases indicate that the FAA, and,
therefore, 35 U.S.C. § 294, apply to prevent institution of
agency proceedings initiated by a party to an arbitration
agreement: EEOC v. Waffle House, Inc., 534 U.S. 279(2002), and Preston v. Ferrer, 552 U.S. 346 (2008). 5 In Waf-
fle House, the Supreme Court found that an arbitration
agreement between an employee and employer did not bar
an enforcement action brought by the EEOC because the
EEOC was not a signatory to the agreement. 534 U.S. at
5 The majority notes that MaxPower did not raise
Preston or Waffle House in its petition. But that MaxPower
did not cite those cases does not prevent this court from
considering them or any other applicable law. “When an
issue or claim is properly before the court, the court is not
limited to the particular legal theories advanced by the
parties, but rather retains the independent power to iden-
tify and apply the proper construction of governing law.”
Kamen v. Kemper Fin. Servs., Inc., 500 U.S. 90, 99 (1991).
There is nothing improper with sua sponte seeking guid-
ance in binding Supreme Court precedent.
Case: 21-146 Document: 19 Page: 14 Filed: 09/08/2021
IN RE: MAXPOWER SEMICONDUCTOR, INC. 9
297. But, in Waffle House, the Supreme Court noted that
it might hold differently if “the EEOC could prosecute its
claim only with [the employee’s] consent, or if its prayer for
relief could be dictated by” the employee, who was a party
to the arbitration agreement. Id. at 291.
In Preston, the Supreme Court distinguished Waffle
House, noting that in Waffle House the agency sat “not as
adjudicator but as prosecutor[.]” 552 U.S. at 359. The Su-
preme Court went on to “disapprove the distinction be-
tween judicial and administrative proceedings” and find
that the FAA overrides state statutes that refer certain dis-
putes to an administrative agency for initial adjudication.
Id. at 360. Preston shows that arbitration agreements can
preclude an administrative agency’s exercise of its other-
wise lawful jurisdiction to adjudicate disputes, such as the
Board’s jurisdiction over inter partes review proceedings.
And Waffle House is not to the contrary. Unlike the EEOC
in Waffle House, the Board sits as a neutral adjudicator ra-
ther than as a party, and ROHM, a signatory to the TLA,
had complete control over the inter partes review peti-
tions. 6
In Preston, the Supreme Court determined that the va-
lidity of a contract between an actor, Alex Ferrer, and his
former attorney, Arnold Preston, must be determined by an
arbitrator pursuant to the contract’s arbitration agree-
ment, despite a California law that vested original jurisdic-
tion over the dispute with the California Labor
Commissioner. Preston, 552 U.S. at 350. Preston had
sought arbitration to recover fees allegedly due under a
6 Indeed, we have held that the Board may only de-
cide invalidity grounds raised by a petitioner in its petition
and “the Board must base its decision on arguments that
were advanced by a party, and to which the opposing party
was given a chance to respond.” In re Magnum Oil Tools
Int'l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016).
Case: 21-146 Document: 19 Page: 15 Filed: 09/08/2021
10 IN RE: MAXPOWER SEMICONDUCTOR, INC.
contract with Ferrer. Id. Ferrer responded by filing a pe-
tition to the California Labor Commissioner charging that
the contract was invalid and unenforceable under the Cal-
ifornia Talent Agencies Act because Preston had acted as a
talent agent without the requisite license. Id. The Talent
Agencies Act grants the Labor Commissioner exclusive ju-
risdiction to decide issues such as that raised by Ferrer. Id.at 355–56. Ferrer argued that the Labor Commissioner’s
original jurisdiction under the Talent Agencies Act is not
incompatible with the FAA because it merely postpones ar-
bitration until after the Labor Commissioner issues her fi-
nal decision. Id. at 356. The Supreme Court rejected that
argument, holding that any arbitration that might poten-
tially follow the Labor Commissioner’s decision “would
likely be long delayed, in contravention of Congress’ intent”
to provide speedy access to and resolution of arbitration.
Id. at 357–58. Ferrer also asked the Supreme Court to
overlook the conflict between the arbitration clause and the
Talent Agencies Act “because proceedings before the Labor
Commissioner are administrative rather than judicial.” Id.
at 358. The Supreme Court rejected this argument. It dis-
tinguished Waffle House because, unlike the EEOC, the La-
bor Commissioner “serves as an impartial arbiter” rather
than as an advocate. Id. at 359. The Supreme Court con-
cluded that the issue was only one of which forum hears
the parties’ dispute, not of substantive rights available to
the parties. Id. It held that, “under the contract he signed,
[Ferrer] cannot escape resolution of those rights in an ar-
bitral forum.” Id.Preston shows that § 294 prevents the Board’s consid-
eration of patent validity in inter partes review proceed-
ings, at least until after an arbitrator has determined that
the issue is not one for arbitration. Applying the Supreme
Court’s analysis in Preston, § 294 is incompatible with the
Board’s exercise of original jurisdiction over IPR proceed-
ings. Permitting the Board to ignore § 294 would delay or
prevent arbitration, in contravention of Congress’s
Case: 21-146 Document: 19 Page: 16 Filed: 09/08/2021
IN RE: MAXPOWER SEMICONDUCTOR, INC. 11
intention to provide for speedy institution and resolution of
arbitration. Preston is analogous to the situation before us
here, as the Board, like the Labor Commissioner in Pres-
ton, acts as a neutral arbiter, not an advocate, and ROHM,
a party to the TLA, initiated and maintains some control
over the inter partes review proceedings.
Waffle House does not foreclose application of § 294 or
the FAA to prevent institution of inter partes review.
ROHM, unlike the employee in Waffle House, is the master
of its own petition (which is analogous to a complaint), and
the Board cannot institute inter partes review without
ROHM’s first petitioning for it. And, while ROHM and
MaxPower cannot compel the Board to terminate the pro-
ceedings, if they request termination before the Board “has
decided the merits of the proceeding,” the Board may
choose to terminate the proceeding. See 35 U.S.C. § 317(a).
Thus, ROHM and MaxPower, both parties to the TLA, have
ongoing influence over the proceedings.
The Board’s reasoning that 35 U.S.C. § 294 does not
apply in the inter partes review context because the stat-
utes governing inter partes review proceedings are in a dif-
ferent chapter than § 294 is unavailing. If Congress
intended to limit § 294 to Chapter 29, it could have easily
done so by limiting its application to “this chapter” as it has
done in many other statutes. Supreme Court cases, such
as Preston, show that the FAA applies to proceedings gov-
erned by statutes outside of Chapter 1 of Title 9, even those
governed by statutes which do not appear in the United
States Code at all. There is no reason to distinguish § 294
or limit its application only to Chapter 29.
The Board’s comparison of § 294 to sovereign immunity
is similarly unavailing. In Regents of the University of Min-
nesota v. LSI Corp., 926 F.3d 1327 (Fed. Cir. 2019), cert.
denied, 140 S. Ct. 908 (2020), this court held that “sover-
eign immunity does not apply to . . . agency proceedings
commenced by the United States,” such as inter partes
Case: 21-146 Document: 19 Page: 17 Filed: 09/08/2021
12 IN RE: MAXPOWER SEMICONDUCTOR, INC.
review proceedings. 926 F.3d at 1337–38. We have not ad-
dressed the impact of private arbitration agreements and
how those agreements affect the Board’s institution of inter
partes review.
The Board also asserted that interpretation of the TLA
is beyond its mandate. Neither the Board nor ROHM has
cited any statute or cases from this court or the Supreme
Court to support this assertion. The Board pointed to two
previous Board decisions in which it declined to interpret
forum selection clauses, but those cases are not binding
here. Moreover, the Board need not have undertaken
much, or indeed, any, contractual interpretation here. The
Board could have relied on the district court’s finding that
arbitrability is an issue for the arbitrator, and refused to
institute until the parties have completed arbitration. To
the extent there is any uncertainty in the TLA, the Board
should have heeded the Supreme Court’s pronouncement
that “any doubts concerning the scope of arbitrable issues
should be resolved in favor of arbitration,” and refused to
institute until after the parties have undertaken arbitra-
tion to resolve the issue. See Moses H. Cone, 460 U.S. at
24–25.
The majority asserts that neither § 294 nor the Su-
preme Court’s precedent in Preston requires the Board to
enforce the parties’ arbitration agreement. But the Board
need not enforce the arbitration agreement. It need merely
defer to the arbitration agreement by staying or terminat-
ing its own proceedings until the arbitration issue is re-
solved. The majority states that it is the parties, not the
Board, that “cannot escape resolution” in an arbitral forum.
But the majority and the Board permit ROHM to do exactly
that—escape resolution in an arbitral forum.
The majority also relies on the fact that § 294 does not,
on its face, task the Board with enforcing private
Case: 21-146 Document: 19 Page: 18 Filed: 09/08/2021
IN RE: MAXPOWER SEMICONDUCTOR, INC. 13
arbitration agreements in inter partes review proceedings. 7
But § 294 need not list every possible situation in which it
applies. Section 294 does not mention its applicability to
administrative proceedings, but nor does it cabin its ap-
plicability only to judicial proceedings. Rather, it is a stat-
ute of general applicability—it says only that arbitration
provisions “shall be valid, irrevocable, and enforceable[.]”
And the statutes governing inter partes review proceed-
ings, which were enacted years after § 294, never state that
§ 294 does not apply in those proceedings. As the Supreme
Court has noted, there is a “‘stron[g] presum[ption]’ that
repeals by implication are ‘disfavored’ and that ‘Congress
will specifically address’ preexisting law when it wishes to
suspend its normal operations in a later statute.” Epic Sys.
Corp. v. Lewis, 138 S. Ct. 1612, 1624 (2018) (quoting United
States v. Fausto, 484 U.S. 439, 452, 453 (1988)). If Con-
gress wanted to open a loophole in § 294 by permitting the
Board to ignore that section in inter partes review proceed-
ings, surely it would have said so.
B. No Other Avenue for Adequate Relief
MaxPower has no other adequate method of obtaining
relief. We have determined that § 314(d) precludes inter-
locutory appeal of the Board’s grants of institution here. A
writ of mandamus directing the Board to terminate or stay
the inter partes reviews is the only way to prevent the re-
views from proceeding. See In re Princo Corp., 478 F.3d
1345, 1357 (Fed. Cir. 2007) (finding that a party whose
right “cannot be vindicated by direct appeal” “lacks ade-
quate alternative means to obtain the relief sought” (inter-
nal quotation marks and citation omitted)). By forcing
7 If, as the majority implies, § 294 applies only in ju-
dicial and not in administrative forums, that may lead to
the odd result of this court being prevented from hearing
appeals from inter partes review final decisions, as § 294
would require enforcement of the arbitration provision.
Case: 21-146 Document: 19 Page: 19 Filed: 09/08/2021
14 IN RE: MAXPOWER SEMICONDUCTOR, INC.
MaxPower to defend the validity of its patents through
multiple concurrent inter partes review proceedings, the
majority denies MaxPower the benefit of any agreement to
arbitrate validity. If the Board finds that any of Max-
Power’s claims are invalid, the harm to MaxPower is com-
pounded. Under § 294, an arbitrator’s invalidity
determinations are binding only on the parties to the arbi-
tration and has no effect on anyone else. 35 U.S.C. § 294(c).
An arbitrator cannot cancel a patent claim. If the Board
finds a claim invalid during inter partes review, it cancels
the claim.
In enacting § 294, Congress intended to assure con-
tracting parties “that they could avail themselves of the nu-
merous advantages of arbitration without the possibility of
having to reargue the dispute in court.” H.R. Rep. No. 97-
542, at 13 (1982). In a House Committee on the Judiciary
Report recommending passage of the appropriations act
which contained the first version of § 294, the Committee
explained:
The advantages of arbitration are many: it is usu-
ally cheaper and faster than litigation; it can have
simpler procedural and evidentiary rules; it nor-
mally minimizes hostility and is less disruptive of
ongoing and future business dealings among the
parties; it is often more flexible in regard to sched-
uling of times and places of hearings and discovery
devices; and, arbitrators are frequently better
versed than judges and juries in the area of trade
customs and the technologies involved in these dis-
putes.
Id.
By denying mandamus to correct the Board’s incorrect
holding that arbitration provisions cannot prevent institu-
tion of inter partes review, this court deprives MaxPower of
all of those advantages, except, perhaps, the last. While
Administrative Patent Judges are admittedly well-versed
Case: 21-146 Document: 19 Page: 20 Filed: 09/08/2021
IN RE: MAXPOWER SEMICONDUCTOR, INC. 15
in the technologies involved in patent validity disputes,
there is no reason to believe that the arbitrator would be
any less so. And, inter partes review does not provide the
other advantages of arbitration. The harm of failing to de-
fer to a valid arbitration provision is particularly acute
where there are multiple concurrent inter partes reviews,
which could be, and should be, addressed in a single arbi-
tration proceeding.
It is not enough to say, as ROHM does, that MaxPower
may be able to raise its arguments under § 294 after the
completion of the inter partes reviews. At that point, the
harm will have been done. And § 314(d) prevents review of
the Director’s institution decisions on appeal of a final de-
cision just as it prevents interlocutory appeals. MaxPower
would have to seek a writ of mandamus after the Board’s
final decision. Any writ this court issued after a final deci-
sion would be too little, too late.
ROHM insinuates that MaxPower should have sought
relief from the district court by requesting an injunction
preventing the inter partes reviews from proceeding.
ROHM does not explain what power a district court over-
seeing an infringement case would have to compel the
Board to halt its proceedings over MaxPower’s patents’ va-
lidity. If MaxPower were to file a separate breach of con-
tract action and receive an injunction compelling ROHM to
drop out of the inter partes review proceedings, those pro-
ceedings may not necessarily end as “the Patent Office may
continue to conduct an inter partes review even after the
adverse party has settled.” Cuozzo Speed Techs., LLC v.
Lee, 136 S. Ct. 2131, 2144 (2016). Moreover, forcing Max-
Power to concurrently litigate in multiple forums is not an
adequate alternative avenue for relief. If MaxPower’s only
avenue for relief is to file a breach of contract claim while
simultaneously defending the validity of its patents in four
inter partes reviews and litigating ROHM’s appeal of the
district court’s decision to compel arbitration, it is further
denied the benefits of its agreement to arbitrate. The
Case: 21-146 Document: 19 Page: 21 Filed: 09/08/2021
16 IN RE: MAXPOWER SEMICONDUCTOR, INC.
arbitration agreement, rather than streamlining disputes
between the parties, will have become a tool to multiply
those disputes.
C. Mandamus Is Appropriate
MaxPower has shown that a writ of mandamus is ap-
propriate under the circumstances. Permitting ROHM to
avoid arbitration nearly vitiates any agreement to arbi-
trate disputes over patent validity. If § 294 does not apply
to inter partes review proceedings, parties to arbitration
agreements have a route to avoid their responsibilities un-
der those agreements despite the strong federal policy of
enforcing arbitration agreements. The Board’s decision
and the majority’s refusal to rectify that decision lead to
the strange result of a patent challenger being able to bring
an inter partes review raising the same validity challenges
that a district court would dismiss pursuant to an arbitra-
tion clause. 8
The majority’s decision not to grant the writ here, or
even to stay the inter partes review proceedings so that this
court can at least hear oral argument, is inconsistent with
the text of § 294 and the Supreme Court’s repeated state-
ments in favor of strong enforcement of arbitration agree-
ments. See AT&T Mobility, 563 U.S. at 346; Buckeye Check
Cashing, 546 U.S. at 443; Gilmer, 500 U.S. at 25; AT&T
Techs., 475 U.S. at 650; Moses H. Cone, 460 U.S. at 24;
United Steelworkers, 363 U.S. at 582–83. MaxPower and
ROHM agreed to take their disputes under the TLA to ar-
bitration. Both Congress and the Supreme Court have
clearly voiced their support for the enforceability of such
agreements. And, yet, MaxPower finds itself forced to
8 Indeed, one district court has already dismissed re-
lated claims concerning infringement of the four patents at
issue in these inter partes reviews. Rohm, 2021 WL
822932, at *1.
Case: 21-146 Document: 19 Page: 22 Filed: 09/08/2021
IN RE: MAXPOWER SEMICONDUCTOR, INC. 17
argue, many times over, in at least three tribunals, for the
enforcement of its arbitration agreement and the validity
of its patents—issues which are properly within the juris-
diction of an arbitrator.
III. CONCLUSION
For the foregoing reasons, I dissent from the majority’s
denial of mandamus directing the Board to stay or termi-
nate the four inter partes review proceedings pending arbi-
tration. I concur in the majority’s dismissal of Appeal Nos.
2021-1950, -1951, -1952, and -1953.