Supreme Court Holds PTAB Time-Bar Decision Is Not Appealable
On April 20, 2020, the Supreme Court of the United States issued an opinion holding that an inter partes review (“IPR”) institution decision by the United States Patent and Trademark Office’s Patent Trial & Appeal Board (“PTAB”) on the impact of a dismissal-without-prejudice of a district court complaint on 35 U.S.C. § 315(b)’s one-year time-bar limitation to file an IPR is not appealable. Thryv, Inc. v. Click-to-Call Techs., LP, No. 18-916, 590 U.S. ____ (2020). According to the Court, 35 U.S.C. § 314(d)’s prohibition on appeal of IPR institution decisions and the Court’s decision in Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 579 U.S. ___ (2016) were determinative.
Federal Circuit Affirms Patent Trial And Appeal Board Reconsideration Ruling That Claims Are Unpatentable On Non-Instituted Ground Not Addressed In Final Written Decision
On January 9, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a decision on reconsideration by the Patent Trial and Appeal Board (PTAB) that held challenged claims to be unpatentable on a non-instituted ground that was not addressed by the PTAB in its final written decision. AG Technologies S.A. v. Amazon.com Inc., —F.3d—, (Fed. Cir. Jan. 9, 2019). The CAFC ruled that the PTAB had not exceeded its statutory authority or deprived the patent owner of fair process by belatedly considering the additional ground.
Federal Circuit Argues Over IPR Appeal Procedure
On March 23, 2018, a divided panel of the United States Court of Appeals for the Federal Circuit (CAFC) found that the Patent Trial and Appeal Board (PTAB) had not sufficiently explained its reasoning in a final written decision invalidating certain patent claims, and reversed the invalidity ruling. DSS Tech. Mgmt. v. Apple Inc., appeal nos. 2016-2523 and 2016-2524. One member of the panel (Newman, J.) dissented, both on the merits, and on whether the panel should have ordered remand instead of reversing.
In IPR Appeal, Federal Circuit Holds That Collateral Estoppel Arises From Prior Claim-Construction Ruling
On March 13, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) ruled that a party was collaterally estopped to challenge a Patent Trial and Appeal Board (PTAB) ruling on a claim-construction issue. The estoppel arose from a previous IPR decision concerning a related patent. Nestle USA, Inc. v. Steuben Foods, Inc., appeal no. 2017-1193.