Federal Circuit Holds it Cannot Review PTAB Decision to Institute IPR

The Federal Circuit held that the Administrative Patent Trial and Appeal Board’s (“PTAB”) decision to institute an Inter Partes Review Proceeding (“IPR”) is not reviewable by the Federal Circuit on appeal.  See Achates Reference Publishing, Inc. v. Apple Inc.  This decision arose from an appeal by the patentee, Achates, of the PTAB’s decision that several of its patent claims were invalid.  Rather than appealing the substance of the PTAB’s decision, however, Achates argued that the IPR should never have been instituted because it was time-barred under 35 U.S.C. § 315(b), which states that an IPR may not be instituted if the petition is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement.  The Federal Circuit did not reach the issue of whether the IPR should have been considered time barred, instead holding that the decision to institute an IPR cannot be appealed on this basis.

In reaching its decision, the court carefully navigated its previous holdings regarding appeals of PTAB decisions to institute post-grant proceedings.  On the one hand, the court had previously held that the decision to institute a covered business method review (“CBMR”) were appealable on the basis of whether the patent was directed to a “covered business method” and therefore subject to CMBR.  See Versata Dev. Grp., Inc. v. SAP America, Inc., 793 F.3d 1306 (Fed. Cir. 2015).  But on the other hand, the Federal Circuit had also prohibited review of PTAB decisions to institute IPRs, and had held that this prohibition was not limited to interlocutory appeals.  In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015) (holding that the failure to cite references in IPR petition provided no ground for setting aside a final decision based on those references).  The court found that Versata was limited to CBMR, stating that the time-bar for filing an IPR is not like the determination that a patent was a covered business method patent because the CBMR decision was “the ‘defining characteristic’ of the Board’s ‘authority to invalidate’ a patent in the specialized CBMR process,” while “the time-bar does not itself give the Board the power to invalidate a patent” and instead is “merely a rule[] that seek[s] to promote the orderly process of litigation.” Achates Reference Publishing, Inc. v. Apple Inc., No. 2014-1767, slip op. at 11 (Fed. Cir. Sep. 30, 2015) (alteration in original) (internal quotation marks omitted).

This decision likely increases the appeal of the IPR process, since the PTAB’s decisions to grant of a petition cannot be appealed, even where the decision seems to violate clear Congressional instructions in the statute.  This significantly eliminates the possibility of wasted time and resources following an improvidently granted petition.   But Congress did set clear boundaries on the jurisdiction of the PTAB to preside over IPRs, and this decision effectively eliminates all possibilities of ensuring the PTAB is adhering to Congress’s statutory dictates, as required under the Supreme Court’s Chevron doctrine.  See Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984).  Accordingly, there is a chance that this case finds its way to the Supreme Court.  This possibility is enhanced by virtue of the fact that the Federal Circuit has rejected efforts to seek mandamus review to make sure the PTAB is not assuming jurisdiction over petitions that exceed its statutory mandate.  See In re The Bd. of Trs. of the Univ. of Ill., 564 Fed. Appx. 1021 (Fed. Cir. 2014).