Cross-Appeal Deadline Rule Is Not Jurisdictional

The Federal Circuit clarified issues of PTAB and appellate procedure in In re IPR Licensing, Inc., No. 2018-1805 (Fed. Cir. Nov. 22, 2019).  An IPR petitioner had challenged the claims of a patent on three grounds; the Board, instituting on one ground, found the patent’s claims obvious because of evidence that the recited features were incorporated into later systems.  On appeal, the Federal Circuit remanded with respect to a single claim because there was no evidence that a skilled artisan would have combined the features at the time of invention.  The Board again found the claim obvious, this time referencing new prior art.  The patentee appealed the Board’s second decision, arguing that the Board relied on prior art that was not asserted in support of the only instituted ground.

The Federal Circuit agreed that the Board could not rely on evidence relating to non-instituted grounds. The new prior art the Board relied on in its second decision had not been part of the IPR before and had only been referenced with respect to a ground on which the Board did not institute.  Absent that evidence, the Board’s decision was based on the same reasoning the Federal Circuit had rejected in the first appeal.  The court thus reversed the Board’s obviousness finding.

The petitioner argued that the case should be remanded for consideration of the two non-instituted grounds under SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).  The patentee contended that the Federal Circuit lacked jurisdiction to decide this issue because the petitioner had not filed a cross-appeal.  The Federal Circuit held, pursuant to Supreme Court precedent, that statutory rules are jurisdictional—but court-made rules are not.  Because there was no statutory basis for the cross-appeal deadline, the Federal Circuit held it had the authority to decide the issue, although ultimately did not as the petitioner voluntarily withdrew its claims pursuant to a settlement agreement.