Appealing Institution Issues and Section 314(d)

The America Invents Act (“AIA”) of 2011 introduced several new tools to attack issued patents at the U.S. Patent and Trademark Office (“USPTO”). Of these, inter partes review—or “IPR” for short—is by far the most popular, comprising 93% of all AIA trials as of December 2019. Inter partes review is an administrative process that permits a patent challenger to ask the U. S. Patent and Trademark Office (“USPTO”) to reconsider the patentability of earlier granted patent claims. For an IPR to proceed, the Director of the USPTO must agree to institute review. Section 314(d) of the AIA makes the “Director’s determination . . . whether to institute an inter partes review under this section . . . final and nonappealable.” Shortly after AIA trials began, several parties attempted to appeal a decision on institution only to be confronted by the “nonappealable” clause of § 314(d). This issue has received renewed attention with recent decisions by the Supreme Court and Federal Circuit. In this article, Finnegan attorneys Dan Cooley and Alex Harding discuss the new and prior case law for direct appeals and writs of mandamus to the United States Court of Appeals for the Federal Circuit.

Read the full article here.