Publications & Presentations
March 12, 2015
In the first-ever ruling in an appeal of an American Invents Act final written decision, the U.S. Court of Appeals for the Federal Circuit overwhelmingly sided with the Patent Trial and Appeal Board. As an initial issue in In re Cuozzo Speed Technologies LLC, the Federal Circuit held the decision to institute an inter partes review cannot be appealed and is final. The court also confirmed that the broadest reasonable interpretation standard for claim construction that the PTAB has been applying is appropriate in AIA reviews, rather than the narrower standard used in district court.

As this case addressed novel and significant procedural questions involving IPR proceedings under the AIA, it is likely that Cuozzo will seek further review by either the en banc Federal Circuit or the U.S. Supreme Court. In the meantime, there are a number of implications from the decision and practical tips that petitioners and patent owners should keep in mind.

Court Leaves the Door Ajar for Mandamus Review to Challenge Decision to Institute

The AIA created a framework for when PTAB decisions regarding institution of an IPR can be appealed to the Federal Circuit. For example, 35 U.S.C. § 314(d) provides:

(d) No Appeal. —The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.

The Federal Circuit previously addressed § 314(d) as it pertains to decisions denying institution of an IPR and held denials are not appealable.[1]

Now, the Federal Circuit has expanded upon its early decisions and “conclude[d] that § 314(d) prohibits review of the decision to institute IPR even after a final decision. On its face, the provision is not directed to precluding review only before a final decision. It is written to exclude all review of the decision whether to institute review."[2]

However, the Federal Circuit remarkably left the door ajar to mandamus review. The court stated “[the] answer is that mandamus may be available to challenge the PTO’s decision to grant a petition to institute IPR after the Board’s final decision in situation where the PTO has clearly and indisputably exceeded its authority.”[3]

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