No Mandamus to Reexamine 1000 12-Year-Old Patents

Appearing pro se, Dr. Pieczenick instituted Pieczenik v. Domantis, et al. (Fed. Cir. January 14, 2004; not citable as precedent) claiming that several of the defendants infringed his patents for sorting and identifying biological information. Concurrent with his infringement claim, Dr. Pieczenick also brought suit against the Director of the PTO averring that the PTO was dilatory in issuing the patents, waiting for more than 12 years to issue either "submarine" patent. To mitigate the harm from that delay, Dr. Pieczenick asked the district court to grant a writ of mandamus directing the PTO to reexamine all patents related to his that issued after he filed his original patent applications. Such an undertaking, according to Dr. Pieczenick, would require the reexamination of more than 1,000 separate patents.

In a per curium decision, the Federal Circuit agreed with the district court that,

"Although the Administrative Procedure Act waives sovereign immunity for
mandamus actions against federal agencies, we have stated that mandamus is
available as a remedy for a plaintiff 'only if he has exhausted all other
avenues of relief and only if the defendant owes him a clear nondiscretionary
duty.' We agree with the district court that, while the PTO may sua sponte
decide to reexamine an issued patent, such a reexamination rests solely in the
PTO’s discretion. See 35 U.S.C. § 303(a) ('On his own initiative, and any time,
the Director may determine whether a substantial new question of patentability
is raised by patents and publications discovered by him.'). Therefore, the PTO
does not owe Dr. Pieczenick a clear duty, and mandamus is inappropriate."