Arbitration Agreements Do Not Prevent PTAB From Determining Validity In IPR Proceedings

In re MaxPower Semiconductor, Inc., No. 2021-146 (Fed. Cir. Sept. 8, 2021) / MaxPower Semiconductor v. Rohm Semiconductor USA, LLC, Nos. 2021-1950, 1951, 1952, 1953 (Fed. Cir. Sept. 8, 2021)

Petitioner filed requests for inter partes review on four separate patents. The Patentee argued that the Patent Trial and Appeal Board ("PTAB") was precluded from determining patent validity because the parties had agreed to arbitrate that issue. The PTAB found it still had the authority to determine validity and instituted all four IPRs. The Patentee directly appealed those institution decisions and, in the alternative, sought a writ of mandamus.

Under 35 U.S.C. § 314(d), the PTAB's determination of whether to institute an IPR is final and nonappealable. The Patentee argued that the appeal should still be heard under the collateral order doctrine because the claims were subject to arbitration. That argument was rejected because the doctrine is limited to rights that will be