Federal Circuit Lacks Jurisdiction to Review PTAB Decisions Concerning IPR Petition Time-Bar | Practical Law

Federal Circuit Lacks Jurisdiction to Review PTAB Decisions Concerning IPR Petition Time-Bar | Practical Law

In Achates Reference Publishing, Inc. v. Apple Inc., the US Court of Appeals for the Federal Circuit dismissed the appeal of an inter partes review (IPR) decision by the Patent Trial and Appeal Board (PTAB), holding that 35 U.S.C. § 314(d) prohibits the Federal Circuit from reviewing the PTAB's determination to initiate an IPR proceeding based on its assessment of the time-bar provision of 35 U.S.C. § 315(b), even if the assessment is made as part of the PTAB's final written decision. 

Federal Circuit Lacks Jurisdiction to Review PTAB Decisions Concerning IPR Petition Time-Bar

by Practical Law Intellectual Property & Technology
Published on 01 Oct 2015 • USA (National/Federal)
In Achates Reference Publishing, Inc. v. Apple Inc., the US Court of Appeals for the Federal Circuit dismissed the appeal of an inter partes review (IPR) decision by the Patent Trial and Appeal Board (PTAB), holding that 35 U.S.C. § 314(d) prohibits the Federal Circuit from reviewing the PTAB's determination to initiate an IPR proceeding based on its assessment of the time-bar provision of 35 U.S.C. § 315(b), even if the assessment is made as part of the PTAB's final written decision.
On September 30, 2015, in Achates Reference Publishing, Inc. v. Apple Inc., the US Court of Appeals for the Federal Circuit dismissed the appeal of a Patent Trial and Appeal Board (PTAB) decision, holding that under 35 U.S.C. § 314(d), the Federal Circuit does not have jurisdiction to review the PTAB's determination of whether the one-year time bar of 35 U.S.C. § 315(b) applies in an inter partes review (IPR) proceeding, even if the PTAB restates its determination as part of its final written decision (Nos. 2014-1767, -1788, (Fed. Cir. Sept. 30, 2015)).
This case involved petitions filed by Apple Inc. to institute IPR proceedings against Achates Reference Publishing, Inc.'s patents, US Patent Nos. 5,982,889 and 6,173,403. Apple filed the petitions with the USPTO after it was joined as a defendant in 2012 to a district court suit brought by Achates alleging infringement of its patents. Achates had originally filed the case on June 20, 2011 against QuickOffice, Inc. and other defendants.
In December 2012, Apple filed petitions for IPR of each of the patents at issue. In responding to the petitions, Achates:
  • Argued that Apple's petitions were time-barred under 35 U.S.C. § 315(b), which states that the PTAB cannot institute an IPR if the IPR petition is filed more than 1 year after the petitioner or a real party in interest or privy of the petitioner is served with a complaint alleging infringement of the patent.
  • Moved for discovery of evidence to prove that Apple was a real party in interest based on an alleged blank indemnification agreement with QuickOffice, and possibly other co-defendants, and therefore the June 20, 2011 date was the relevant date to determine whether Apple's IPR petitions were time-barred.
The PTAB denied Achates' motion and held in its institution decision that the IPR proceedings were not time-barred under § 315(b). The PTAB subsequently reaffirmed this holding in its final written decision. Achates appealed to the Federal Circuit, challenging the PTAB's denial of its motion as well as its conclusion that Apple's petitions were not time-barred.
The Federal Circuit dismissed the appeals, holding that it did not have jurisdiction to hear the case under § 314(d), which provides that IPR institution decisions are final and nonappealable. The court began by discussing its precedent concerning its jurisdictional authority to review PTAB institution decisions in other contexts, including review of decisions not to institute an IPR and interlocutory appeals before a final written decision. For more information on these decisions, see Legal Updates, PTAB Decisions Whether to Institute Inter Partes Review Are Not Appealable: Federal Circuit, Federal Circuit Upholds First AIA Inter Partes Review and Federal Circuit Affirms Versata's Claims are Unpatentable in Substantial Review of PTAB's First CBM Decision.
The court rejected Achates' argument that PTAB's assessment of the time-bar was analogous to the issue in Versata Development Group, Inc. v. SAP America, Inc. (793 F.3d 1306 (Fed. Cir. 2015)), where the Federal Circuit held that it has jurisdiction to review a PTAB determination of whether a challenged patent is a "covered business method" patent. The court concluded that the case is distinguishable from the Versata case, however, because:
  • The § 315(b) time-bar did not impact the PTAB's authority to invalidate a patent claim in general, it only barred particular petitioners from challenging the claim, and the PTAB could invalidate the patent claim at issue via a properly-filed petition by another petitioner.
  • The time-bar is not a defining characteristic of the PTAB's authority to invalidate the patent because compliance with the time-bar does not itself give the PTAB its power to invalidate the patent.
Finally, the court rejected Achates' additional jurisdictional theories that:
  • The PTAB's time-bar determination was appealable because the PTAB restated it as part of its final written decision.
  • § 314(d) only precludes review under its specific statutory section and therefore does not preclude review of § 315(b) determinations.