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Thursday, 27 October 2016 17:52

PTAB Holds Institution Decisions of IPRs are Final and Nonappealable

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The Patent Trial and Appeal Board (PTAB) of the USPTO recently reaffirmed a holding that its institution decisions regarding whether or not to proceed with an inter partes review (IPR) of an issued patent are "final and nonappealable" under 35 U.S.C. § 314(d).  In this case, Medtronic, Inc. v. Robert Bosch Healthcare Sys. Inc., Fed. Cir. No. 2015-1977 (10/20/2016), the PTAB terminated an IPR because the petitioner failed to disclose all real parties in interest, which is subject to a ban on judicial review in accordance with 314(d).  

This case was reconsidered due to the Supreme Court's recent analysis in Cuozzo, which stated that 314(d) bars only review of questions "closely related" or "closely tied" to "the application and interpretation of statutes related to the Patent Office's decision to initiate inter partes review". Cuozzo, 136 S. Ct. at 2141-42.  Here, in Medtronic, the PTAB observed that it is difficult to conveive any case more "closely related" to a decision to institute proceedings than a reconsideration of that very decision.  Finding no conflict with Cuozzo, the PTAB reaffirmed its earlier holding.  As such, petitioners must take great care in compliance with post grant proceeding procedures at the PTAB when attempting the institution of a proceeding, as there are no second chances of an appeal under current law.

The full decision is available at http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1977.Opinion.10-18-2016.1.PDF.

Read 1111 times Last modified on Thursday, 27 October 2016 18:09
Tony Guo

As a specialized technology counsel, Tony supports his clients in the high tech, creative, and online industries. His primary areas of practice include intellectual property protection, Internet law, and startups. Tony is a USPTO registered patent attorney, as well as a licensed lawyer in California and Florida. He comes from a background involving considerable hardware and software development experience, having worked in both development and IT roles in the tech and finance industries.