Below are Federal Circuit decisions relating to appeals originating from AIA proceedings, including decisions concerning the Federal Circuit’s jurisdiction to review PTAB decisions and the standards of review applied by the Federal Circuit.
St. Jude Med. Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014). St. Jude appealed the Board’s decision not to institute its IPR petition on the basis that St. Jude was time-barred under 35 U.S.C. § 315(b). The Federal Circuit held that it cannot hear St. Jude’s appeal pursuant to 35 U.S.C. § 314(d), which “certainly bars an appeal of the non-institution decision.”
In re Dominion Dealer Sols., Inc., 749 F.3d 1379 (Fed. Cir. 2014). Dominion Dealer’s IPR petitions were denied based on the Board’s determination that the petitions did not establish a reasonable likelihood of prevailing. Dominion Dealer petitioned the Federal Circuit for mandamus relief, requesting the Federal Circuit to vacate the institution decisions and order the Board to institute IPR proceedings. The Federal Circuit denied mandamus relief, holding that Dominion Dealer did not have a “clear and indisputable right” right to relief, which is a requirement for mandamus relief. Dominion Dealer did not have a “clear and indisputable” right due to the non-appealability provisions of 35 U.S.C. § 314(d).
In re Procter & Gamble Co., 749 F.3d 1376 (Fed. Cir. 2014). Patent owner petitioned the Federal Circuit for a writ of mandamus to compel the Board to vacate its institution decision. Patent owner argued that petitioner was barred from seeking review under § 315(a) because it filed a declaratory judgment action prior to filing the petition. The Board disagreed and instituted trial. Following its reasoning in St. Jude and Dominion Dealer, the Federal Circuit denied mandamus and dismissed the appeal because patent owner did not have a right to appeal the institution decision. The Federal Circuit held that it “may not hear an appeal from the Director’s decision not institute an inter partes review.”
GEA Process Eng’g v. Steuben Foods, Inc., 618 Fed.Appx. 667 (Fed. Cir. 2015). The Board vacated five IPR decisions to institute based on its determination that GEA did not name all real parties-in-interest. The Federal Circuit held that it lacked authority to hear GEA’s appeal under § 314(d). The Federal Circuit determined that the Board’s dismissal of the IPR proceedings is not a final written decision with respect to the patentability of the challenged claims under § 318(d). The Federal Circuit also denied mandamus for the same reasons as in Dominion Dealer.
In re Cuozzo Speed Techs., LLC, 778 F. 3d 1271 (Fed. Cir. 2015), rehearing denied en banc, 793 F.3d 1297 (Fed. Cir. 2015), affirmed, 136 S. Ct. 2131 (2016). The Board has statutory authority to construe claims using the broadest reasonable interpretation standard, rather than the Phillips standard used in district court litigation. The Federal Circuit does not have jurisdiction under 35 U.S.C. § 314(d) to review the Board’s institution decision, even if the Board instituted grounds of challenge not presented in the petition.
GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309 (Fed. Cir. 2015). After instituting CBM review, the Board vacated its institution decision and terminated the proceeding, because petitioner had previously filed a declaratory judgment action against the challenged patent. The Federal Circuit held that the Board’s decision to reconsider its institution decision is effectively a decision on institution, which is not reviewable under 35 U.S.C. § 324(e). “Administrative agencies possess inherent authority to reconsider their decisions, subject to certain limitations, regardless of whether they possess explicit statutory authority to do so.”
Achates Reference Publ’g, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015). The Federal Circuit held that an issue relating to the Board’s decision to institute an IPR does not become appealable if the Board addresses or reconsiders that issue in the final written decision.
Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., No. 2015-1977, Doc. 33 (Nov. 17, 2015). Prior to being acquired by petitioner, a third party filed IPR petitions that were not instituted. After acquiring the third party, petitioner then filed IPR petitions that were institued. Medtronic did not name the new subsidiary as a real party-in-interest (RPI). The Board vacated the instituted proceedings, finding that petitioner was acting as a proxy for its time-barred new subsidiary. Petitioner requested to correct the petitions to name its new subsidiary as an RPI, but the Board denied the request, finding that the petitions would require a new filing date if the subsidiary was added, but doing so would be futile because the subsidiary was time-barred. The Federal Circuit ruled that, under § 314(d), it cannot hear appeals on the Board’s decision to reconsider and vacate its institution determination because the Board’s decision is not a final written decision on the patentability of the claims. The Federal Circuit also rejected petitioner’s request to treat the appeal as a writ of mandamus. Petitioner argued that it should have been allowed to add its subsidiary as an RPI as part of its mandamus argument, but the Federal Circuit, citing In re Dominion Dealer, determined that petitioner did not have a “clear and indisputable” right to relief in view of § 314(b)’s bar on reviewing institution decisions.
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015). The Federal Circuit held that the Board’s decision concerning whether a patent qualifies as a “covered business method” patent under AIA § 18(d) is judicially reviewable as part of the appellate review of the final written decision. The Federal Circuit cannot review whether the Board should have instituted CBM review in the first place. “As a matter of statutory construction, the definition of ‘covered business method review’ is not limited to products and services of only the financial industry, or to patents owned by or directly affecting the activities of financial institutions such as banks and brokerage houses….[The] plain text of the statutory definition contained in § 18(d)(1)…on its face overs a wide range of financial-related activities.”
SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307 (Fed. Cir. 2015). The Federal Circuit held that it does not have authority, pursuant to 35 U.S.C. § 324(e), to review whether the Board properly instituted a CBM review on grounds of challenge not asserted in the petition. In instituting CBM review, the Board exercised its discretion to institute grounds of obviousness based on anticipation grounds asserted in the petition. Petitioner had asserted only anticipation grounds in the petition. In the final written decision, the Board determined that the claims were unpatentable as obvious but were not anticipated. The Federal Circuit held that the CBM statute “does not limit the Board’s authority at the final decision stage to grounds alleged in the CBM petitions.” While the Federal Circuit cannot review the Board’s decision to institute grounds not asserted in the petition, the court can review whether the patent qualifies as a CBM patent because it “is a limitation on the Board’s authority to issue a final decision.”
Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023 (Fed. Cir. 2016). The Board’s decision whether to institute inter partes review is final and non-appealable, but § 314(d) does not prevent the Federal Circuit from hearing the presented challenge to whether the same panel that decided to institute review can decide the merits of the proceeding. Having the same panel which decided to institute inter partes review decide the merits of the patentability of the claims in a final written decision does not violate the AIA or the Due Process Clause of the Constitution.
MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284 (Fed. Cir. 2015). In addition to affirming the constitutionality of IPR proceedings, the Federal Circuit reaffirmed the ruling in Achates, holding that the Federal Circuit is prohibited under 35 U.S.C. § 314(d) from reviewing the Board’s determination to initiate IPR proceedings based on the Board’s assessment of the time-bar of 35 U.S.C. § 315(b).
Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016). The Board is not required to issue a final written decision for all clams challenged in a petition. 35 U.S.C. § 318(a) requires the Board to issue a final written decision with respect to “any patent claim challenged by the petitioner.” 35 U.S.C. § 318(a) only applies to claims for which the IPR was instituted, not every claim challenged in the petition. 35 U.S.C. § 314(a) allows the Board to institute inter partes review on a claim-by-claim basis. The decision of the Board to institute review as to some or all claims challenged is not reviewable under § 314(d). A final written decision will have a limited estoppel effect for claims whose review the Board did not institute.
Harmonic, Inc. v. Avid Technology Inc., 815 F.3d 1356 (Fed. Cir. 2016). A decision by the Board to institute some grounds but not others is not judicially reviewable under 35 U.S.C. § 314(d). In this case, pursuant to 37 C.F.R. § 42.108(a), the Board declined to review some of the asserted grounds on the basis that these grounds were redundant to the instituted grounds. The Federal Circuit stated that “[a] decision to institute on only a subset of the grounds identified in the petition is simply a combination of” a decision to institute and a decision not to institute. The Federal Circuit held that the Board may deny some grounds as redundant.
Shaw Indus. Grp. v. Automated Creel Sys., 817 F.3d 1293 (Fed. Cir. 2016). Grounds of challenge which are denied institution as “redundant” are not appealable under 35 U.S.C. § 314(d). However, petitioner is not estopped from asserting such “redundant” grounds in a future proceeding. The estoppel preclusion applies only to grounds of challenge that were raised or could have been raised during the IPR review. An IPR review does not begin until institution. Consequently, grounds which are denied institution are not subject to the estoppel preclusion because they could not have been raised during the IPR review.
Intelligent Bio-Systems Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir. 2016). The Federal Circuit reviews decisions related to compliance with the Board’s procedures, including whether a petitioner exceeded the scope of a proper reply (37 C.F.R. § 42.23(b)) or improperly incorporated arguments by reference from another document (37 C.F.R. § 42.6(a)(3)), under the abuse of discretion standard. “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for challenge to each claim.’” 35 U.S.C. § 312(a)(3).
In re Warsaw Orthopedic, Inc., Appeal Nos. 2015-1050, 2015-1058 (Fed. Cir. Aug. 9, 2016). The Federal Circuit reviews the Board’s legal conclusions de novo, and its factual findings for substantial evidence. Obviousness is a question of law based on underlying findings of fact. The Graham factors are each questions of fact that are reviewed under the substantial evidence standard. Substantial evidence is something less than the weight of the evidence but more than a scintilla of evidence. In reviewing the Board’s determination that the claims were obvious, the Federal Circuit may not reweigh facts already considered by the Board. A finding of evidence does not require a cited reference to expressly disclose each limitation. The Federal Circuit upheld the Board’s obviousness determination for most of the claims. The Federal Circuit, however, vacated part of the Board’s decision because the Board did not sufficiently describe its rationale for concluding that a claim is obvious. The Board provided only a single sentence for claim 17, indicating that the asserted reference “appears to disclose” a feature of the claim. The Federal Circuit explained that the Board must set forth “logical and rational” reasons to support its decision.
Wi-Fi One, LLC v. Broadcom Corp., Appeal No. 2015-1944 (Fed. Cir. Sept. 16, 2016). The Federal Circuit affirmed the Board’s determination that several of the claims are anticipated. Patent owner (Wi-Fi One) argued that petitioner should have been barred under 35 U.S.C. § 315(b) on the basis that petitioner was in privity with entities who had previously been sued for infringement more than one year prior to filling of the petition. The Board disagreed with the patent owner’s § 315(b) argument, determining that petitioner was not a privy of the prior litigants because patent owner did not show that petitioner controlled the district court litigation or that petitioner would be bound by the outcome of that litigation. The Board also denied patent owner’s motion for discovery on the privity issue. Following the Achates decision, the Federal Circuit held that it cannot review the Board’s determination that petitioner was not barred from challenging the patent under § 315(b), because that determination relates to the Board’s institution decision. Decisions on institution are not reviewable under § 314(d). In Cuozzo, “[t]he Supreme Court extended the preclusion of judicial review to statutes related to the decision to institute; it did not limit the rule of preclusion to substantive patentability determinations made at the institution stage.”
Husky Injection Molding Sys., Ltd. v. Athena Automation Ltd., Appeal No. 2015-1726, -1727 (Fed. Cir. Sept. 23, 2016). The Federal Circuit held that it did not have jurisdiction to hear patent owner’s appeal of the Board’s decision not to decline institution based upon the equitable doctrine of assignor estoppel. Relying on Cuozzo, the Federal Circuit held that reviewing the Board’s refusal to deny institution on the ground of assignor estoppel is not permitted under § 314(d). The court set forth a two-step analysis for determining whether an institution decision is reviewable. First, the court must determine whether the challenge is “closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review,” which would preclude review, or whether the challenge “implicate[s] constitutional questions,” “depend[s] on other less closely related statutes,” or “present[s] other questions of interpretation that reach…well beyond” the general bar against reviewability. Second, in case the decision is “closely tied” to the statute, the court must determine whether the challenge is “directed to the Board’s ultimate invalidation authority with respect to a specific patent” (e.g., whether the patent is CBM-eligible), in which case the institution decision is reviewable.