In IN RE PROCTER & GAMBLE CO., Appeal No. 14-121, ST. JUDE MEDICAL, CARDIOLOGY DIVISION, INC. v. VOLCANO CORP., Appeal No. 14-1183, and IN RE DOMINION DEALER SOLUTIONS, LLC, Appeal No. 14-109, the Federal Circuit held that decisions to institute or deny inter partes review are not immediately reviewable.

St. Jude appealed the PTO’s decision not to institute an inter partes review (IPR).  St. Jude argued that the Federal Circuit had jurisdiction to hear the appeal pursuant to 28 U.S.C. § 1295(a)(4)(A), which authorizes the Federal Circuit to hear “an appeal from a decision” of the Patent Trial and Appeal Board (PTAB) with respect to an IPR.  The patentee, Volcano, and the PTO, an intervenor in the appeal, filed motions to dismiss based on lack of jurisdiction, relying on 35 U.S.C. § 314(d), which states the PTO’s decision whether to institute an IPR “shall be final and nonappealable.”  The Federal Circuit granted the motion, interpreting the statutes as precluding the Federal Circuit from hearing an appeal of a PTO decision whether to institute an IPR. 

Dominion and Procter & Gamble each involves a petition to the Federal Circuit seeking the issuance of a writ of mandamus directing the PTO to change a decision regarding the institution of IPR petitions.  In Dominion, the PTAB denied five IPR petitions, and Dominion, the accused infringer, sought a writ directing the PTO to institute the five IPRs.  In Procter & Gamble, the PTAB granted three IPR petitions, and Procter & Gamble, the patentee, sought a writ directing the PTO to withdraw the orders instituting the IPRs.  In both Dominion and Proctor & Gamble, the Federal Circuit denied the writ petitions.  The Federal Circuit applied the same reasoning it used to grant the motion to dismiss in the St. Jude case, namely that the statutory framework does not allow the Federal Circuit to review PTO decisions whether to institute IPRs.  At a minimum, under the statutory framework neither Dominion nor Procter & Gamble could show a “clear and indisputable” right to relief, as is required for the remedy of mandamus.

In VAILLANCOURT v. BECTON DICKINSON & CO., Appeal No. 13-1408, the Federal Circuit dismissed the appeal due to lack of a cause of action, holding that a patent owner alone can appeal a final decision in aninter partes reexamination.

Appellee Becton Dickinson requested an inter partes reexamination of Vaillancourt’s patent. The Examiner rejected all claims and Vaillancourt appealed to the Board.  While the appeal was pending, Vaillancourt assigned the entire right, title, and interest in the patent to a third party, VLV.  The Board affirmed the examiner’s decision.  Vaillancourt appealed to the Federal Circuit under 35 U.S.C. § 141.

The Federal Circuit found that the unambiguous language of 35 U.S.C. § 141 provides that a patent owner alone can appeal a final decision in an inter partes reexamination to the Federal Circuit.  Vaillancourt did not dispute that he is not the owner of the patent.  Instead, he argued that he was entitled to appeal because (1) he was allegedly authorized by VLV to continue with all related proceedings regarding the patent, and (2) that he was the sole owner of VLV.  The Federal Circuit rejected Vaillancourt’s arguments.  The statute gives no indication that a patent owner can delegate its authority to bring an appeal to a third party.  Accordingly, Vaillancourt had no cause of action and the appeal was dismissed.