Federal Circuit Provides Two-Part Analysis for Determining Reviewability of PTAB Institution Decisions

The Federal Circuit in Husky Injection Molding Systems, Inc. v. Athena Automation Ltd., No. 2015-1726 (Fed. Cir. Sep. 23, 2016) recently dismissed Husky’s appeal from a final written decision in IPR. The court found it “lack[ed] jurisdiction to review the Board’s determination on whether assignor estoppel precludes it from instituting inter partes review.” Slip op. at 19.

Assignor estoppel generally prevents an assignor of a patent from later asserting that the patent is invalid. Here, a co-inventor of the patent at issue was Husky’s former owner and president, who had assigned the patent to Husky. After assigning the patent, he formed Petitioner Athena and alleged unpatentability of the patent in IPR. The Board found that assignor estoppel does not apply in an IPR, instituted review, and found certain claims unpatentable.

On appeal to the Federal Circuit, after reviewing the prevailing case law, the court identified a two-part framework to determine whether it may review a challenge to an institution decision:

• First, the court must determine whether the question falls within one of the three reviewable categories mentioned in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131, 2141 (2016). In Cuozzo, the Supreme Court said the question is not reviewable if it is “closely tied to the application and interpretation of statutes related to the Patent Office’s decision to institute inter partes review.” Husky, slip op. at 14 (quoting Cuozzo). But the question is reviewable “if it instead ‘implicate[s] constitutional questions,’ ‘depend[s] on other less closely related statutes,’ or ‘present[s] other questions of interpretation that reach, in terms of scope and impact,’ well beyond this section.’” (quoting Cuozzo).

• Second, the court must determine “if, despite the challenge being grounded in a ‘statute closely related to that decision to institute,’ it is nevertheless directed to the Board’s ultimate invalidation authority to invalidate with respect to a specific patent.” Id. at 14.

Applying this framework, the court concluded that it lacked the authority to review the Board’s determination at institution that assignor estoppel does not apply at the USPTO.

Judge Plager dissented on the reviewability of the institution decision, stating that the majority decision “may contribute to the already-existing confusion regarding which matters this court can review on appeal from a final decision by the Board.” Dissent, slip op. at 1. In his opinion, the assignor estoppel issue is reviewable under a proper application of Cuozzo.