Challenging Board Decisions Not To Institute Inter Partes Review

Are Board decisions denying or instituting inter partes review appealable to the Federal Circuit? Issuing three precedential opinions on Thursday, April 24, 2014, the Federal Circuit addressed these two questions. Here’s what the Federal Circuit decided, and perhaps more importantly, what it did not.

What the Federal Circuit Decided:

A Board decision not to institute inter partes review is not appealable to the Federal Circuit. 35 U.S.C. § 314(d); St. Jude Medical, Cardiology Div., Inc. v. Volcano Corp., No. 2014-1183 (Fed. Cir. Apr. 24, 2014) (granting motion to dismiss appeal of Board decision not to institute review because counterclaim asserting infringement filed more than a year before petition); In re Dominion Dealer Solutions, LLC, No. 2014-109 (Fed. Cir. Apr. 24, 2014) (denying writ of mandamus asking Court to vacate Board decisions not to institute review).

A Board decision to institute will not be immediately reviewed by the Federal Circuit via a mandamus petition simply to relieve a party of the burden of going through the inter partes review. 35 U.S.C. § 314(d); In re Proctor & Gamble Co., No. 2014-121 (Fed. Cir. Apr. 24, 2014).

What the Federal Circuit Did Not Decide:

For Non-Instituted Inter Partes Reviews:

The Court did not decide whether 35 U.S.C. § 314(d)’s “broad language” precludes judicial review of Board decisions not to institute inter partes review in district courts or by any route. In re Dominion Dealer Solutions, No. 2014-109, slip op. at 3-4 (citing Dominion Dealer Solutions, LLC v. Lee, No. 3:13CV699 (E.D. Va. Apr. 18, 2014)).

For Instituted Inter Partes Reviews:

The Court did not decide whether the Board’s decision instituting review can be challenged later, if the Board reaches a decision and that decision is appealed under 35 U.S.C. § 319. In re Proctor & Gamble Co., No. 2014-121, slip. op. at 5.

Notably, the Court distinguished the Board’s institution decision (first step) from the Board’s “conduct” during review proceedings and patentability decision (second step). St. Jude Medical, No. 2014-1183, slip. op. at 4-6.

The door remains open, it seems, for parties to challenge on appeal both positions taken by the Board in decisions instituting review and actions taken by the Board during review. We have yet to find out how the Federal Circuit will treat, for example, challenges to Board practices concerning redundant grounds, additional discovery, and claim amendments.

The Court also left open the possibility that it would grant mandamus petitions under rare situations involving irremediable interim harm after the Board institutes review but before it issues a decision on the merits. See In re Proctor & Gamble Co., No. 2014-121, slip. op. at 5.