The following cases address the Board’s jurisdiction to review certain challenges in IPR, CBM and PGR proceedings.
Samsung Elecs. Co., Ltd. v. E-Watch, Inc., IPR2015-00612, Paper 8 (PTAB July 8, 2015). Petitioner argued that the challenged patent was not entitled to the earlier filing date of a parent application because of a lack of co-pendency between the parent application and the child application that resulted in the challenged patent. The Board held that it did not have jurisdiction to review a decision by the PTO to revive the parent application. Not all issues having an impact on the determination of patentability are the same. Where the issue is the status of an applied reference as prior art, viewed in light of a patent owner’s effort to antedate the reference, the Board can review the evidence submitted to determine whether the patent owner is entitled to a date of invention prior to the critical date of the reference. That issue is substantive and central to the merit of the patentability determination. However, where the issue is procedural, such as whether an application is abandoned or revived, the Board does not have jurisdiction to review that issue because it is not central to the patentability determination.
SAP Am., Inc. v. Arunachalam, IPR2014-00414, Paper 24 (PTAB Aug. 17, 2015). In an IPR, the Board does not have jurisdiction to review whether a claim complies with the requirements of 35 U.S.C. § 112. The Board can review whether the subject matter of a claim is supported in an ancestral application to determine whether the claim is entitled to the earlier effective filing date of the ancestral application for prior art purposes. “A review of the disclosure for purposes of identifying the priority date for the claimed subject matter is appropriate and within the scope of inter partes review.”
Elekta, Inc. v. Varian Medical Systems, Inc., IPR2015-01401, Paper 19 (PTAB Dec. 31, 2015). The Board held that the requirement of “35 U.S.C. § 312(a)(2) [to identify all real parties-in-interest in the petition] does not define our jurisdiction with respect to inter partes review proceedings.” The Supreme Court’s bright line test for determining whether a statutory limitation is jurisdictional turns on whether Congress has clearly stated that the rule is jurisdictional. Absent such a clear statement, a statutory restriction should be treated as non-jurisdictional in character. The Board indicated that § 312(a)’s emphatic “may be considered only if” language does not make those requirements jurisdictional. The Board also noted that the time-bar of § 315(b) does not implicate the Board’s jurisdiction because the time bar “does not itself give the Board the power to invalidate a patent.”
Symantec Corp. v. Finjan, Inc., IPR2015-01895, Paper 7 (PTAB Feb. 26, 2016). The Board held that it did not have jurisdiction to determine whether patent owner engaged in inequitable conduct. The Board indicated that it is not a court of general jurisdiction, but an administrative tribunal with limited jurisdiction (citing 35 U.S.C. § 311(b) (providing inter partes review only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications)).
Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00731, Paper 39 (PTAB Mar. 2, 2016) (precedential). The Board adopted the ruling in Elekta, IPR2015-01401, Paper 19 (PTAB Dec. 31, 2015), and rejected patent owner’s argument that 35 U.S.C. § 312(a)(2) is a jurisdictional provision. The Board indicated that § 312(a) sets forth requirements that must be satisfied for the Board to give consideration to a petition. However, a lapse in compliance with those requirements does not deprive the Board of jurisdiction over the proceeding, or preclude the Board from permitting such lapse to be rectified. Simply stating that an issue is a “threshold” issue does not make it “jurisdictional,” nor does the timing of the institution decision.