On February 8, 2023, in a precedential order, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the decision by the Director of the U.S. Patent and Trademark Office to deny CyWee Group Ltd.’s (“CyWee’s”) request for rehearing of two IPR proceedings. In doing so, the CAFC rejected CyWee’s argument that the Director is required to actually review, or be able to review, all institution decisions and final written decisions within the statutory time frames set by
35 U.S.C. §§ 316(a)(11) and 314(b).
CyWee Group Ltd. v. Google LLC, No. 2020-1565 (Fed. Cir. Feb. 8, 2023).
CyWee’s appeal came from two IPRs filed against CyWee’s patents in June of 2018. In December of 2018, within the deadline set by 35 U.S.C. § 314(b) (three months from the patent owner’s preliminary response), the Patent Trial and Appeal Board (“Board”) instituted IPR on all challenged claims. In January 2020, within the deadline set by 35 U.S.C. § 316(a)(11) (one year with a possible extension for the joinder of parties), the Board issued a final written decision determining all challenged claims unpatentable.
In March of 2020, CyWee appealed the Board’s decisions challenging, in relevant part, the constitutionality of the appointment of administrative patent judges to the Board. During the appeal, the Supreme Court issued its decision in
United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021) (“
Arthrex”), seemingly agreeing with CyWee and holding that the Board’s power to render final unpatentability decisions gave rise to an Appointments Clause violation.
Id. at 1980-82. However, the Supreme Court also remedied the violation by allowing the Director of the U.S. Patent and Trademark Office to review final decisions of the Board.
Accordingly, the CAFC remanded the CyWee appeal, allowing CyWee to request that the Director rehear the Board’s decisions. CyWee made the request, the Director (in actuality, the Commissioner, as the office of Director was vacant at the time) denied the request, and the instant appeal followed. On appeal, CyWee argued that the decision to deny its request for rehearing was untimely because it did not occur within the statutory deadlines.
The CAFC rejected CyWee’s argument. Although the statutory deadlines reference the Director, (35 U.S.C. §§ 314(b) (The Director shall determine… within 3 months”), 316(a)(11) (“1 year after the date on which the Director notices the institution of a review”)), the Director properly delegated the authority for those deadlines. Accordingly, those deadlines are applicable only to the Board, and not to any further review by the Director.
