Supreme Court - Thyrv, Inc. v. Click-to-Call Technologies, LP - No Appeal from PTAB's One Year Time Bar Decision on IPR

In Thyrv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court held that a Patent Trial and Appeal Board (PTAB) determination on whether a petition is filed timely for inter partes review (IPR) is not appealable.

As background, an IPR permits a petitioner to request the review the validity of claims in view of written prior art. To institute the review, PTAB must find that the petitioner is likely to succeed with respect to at least one claim and the petition was timely filed (within one year of service of an infringement complaint).

In other words, the Supreme Court states 35 USC § 314(a) permits the patent owner no appeal to the Federal Circuit from an incorrect PTAB decision that a petition was timely filed as required in 35 USC § 315(b). Note in this case the infringement complaint (dismissed without prejudice) was filed 12 years before the IPR petition!

Thus, a patent owner must make every effort to win on the merits of the institution decision and the untimeliness of the petition before PTAB. On the other hand, if the IPR is instituted, the patent owner can still appeal a final decision of invalidity to the Federal Circuit.

Copyright © 2020 Robert Moll. All rights reserved.

Federal Circuit - Medtronic v. Robert Bosch Healthcare Systems - PTAB Decision to Discontinue IPR Not Reviewable on Appeal

In Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., the Federal Circuit recently held a Patent Trial and Appeal Board (PTAB)'s decision to discontinue an inter partes review (IPR) due to the petitioner's failure to disclose the real party is not reviewable on appeal under 35 U.S.C. § 314(d). Section 314(d) states "The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable."

The Federal Circuit found nothing contrary in the Supreme Court's decision in Cuozzo Speed Technologies, LLC v. Lee stating the "Board's vacatur of its institution decisions and termination of the proceedings constitute decisions whether to institute inter partes review and are therefore 'final and nonappealable' under § 314(d)."

Copyright © 2016 Robert Moll. All rights reserved.

Supreme Court - Cuozzo Speed Technologies, Inc., v. Lee - Institution of Inter Partes Review is Non-Appealable and Broadest Reasonable Interpretation of Claims is Standard

In Cuozzo Speed Technologies, LLC v. Lee, the US Supreme Court held that a decision by the Patent Trial and Appeal Board (PTAB) on whether to institute an inter partes review (IPR) is final and non-appealable in nearly all cases. The Court also held that PTAB's use of the broadest reasonable interpretation ("BRI") of a claim consistent with the specification is proper in an IPR and within the USPTO rulemaking authority given the statute leaves a gap on the claim construction standard. Given nearly all patent owners cannot enter successfully amend claims in IPR, it's shaky to say IPR is closer to prosecution than litigation, but this is the law today. Further, this Supreme Court decision maintains the status quo where US patents have become more open to invalidity attacks since passage of the America Invents Act.

Copyright © 2016 Robert Moll. All rights reserved.