Divided Federal Circuit Panel Upholds Non-Appealable Nature of PTAB Institution Decisions (Part II)

In part I, we provided an overview of the Federal Circuit’s opinion in In Re Cuozzo Speed Technologies, LLC. In part II, we focus on the opinion’s analysis of the non-appealability of PTAB institution decisions.

Cuozzo argued that the PTO improperly instituted IPR on two claims when it relied on prior art not identified in the Petition as applicable to those claims (but applicable to a dependent claim). However, the majority sided with the PTO, finding that the institution decision should not be reviewed on appeal.

In St. Jude Medical, the Federal Circuit had previously held that 35 U.S.C. § 314(d) bars interlocutory review of the PTO’s denial of a petition for IPR, but had not decided whether it barred review of an institution decision after a final written decision. Here, the majority concluded that § 314(d) does prohibit such a review. The majority relied heavily on the express language of § 314(d) that an institution decision is both “nonappealable” and “final,” stating that “[a] declaration that the decision to institute is ‘final’ cannot reasonably be interpreted as postponing review until after issuance of a final decision on patentability.” The majority further noted that since other sections of the statute already limit appeals to appeals of final decisions, § 314(d) could not be limited to interlocutory appeals, and must be read to bar review of all institution decisions.

In response to Cuozzo’s argument that Congress would not have intended to allow the PTO to institute IPR in direct contravention of the statute, the majority noted that “mandamus may be available” to challenge the PTO’s institution decision after a final decision in situations where the PTO has clearly and indisputably exceeded its authority. The majority noted that, if § 314 does not absolutely bar mandamus, it is very difficult to satisfy the three conditions for mandamus, noting that the present situation “is far from satisfying the clear-and-indisputable requirement for mandamus.”

Judge Newman’s vigorous dissent addressed the non-appealability issue. She opined that the lack of reviewability impedes full judicial review of the PTAB’s final decision, contrary to the purpose of the AIA to achieve correct adjudication of patent validity through IPRs. She asked whether the majority’s holding was “a curious departure from the fundamental rule of administrative action, that agency decisions must be reviewable on appeal?”