In Husky Injection Molding Systems Ltd. v. Athena Automation Ltd., Appeal Nos. 2015-1726, -1727, the Federal Circuit announced a test to determine when it can review a challenge to a decision to institute a post-grant proceeding.

First, the Federal Circuit must determine whether the challenge is “closely tied” to the application or interpretation of statutes related to the decision to institute, or if it instead relates to constitutional questions, other less closely related statutes, or other questions that reach beyond the section of the statute related to instituting post-grant proceedings.  If the latter, the Federal Circuit can review the decision. If the former, the Federal Circuit can only review the decision if it “is directed to the Board’s ultimate invalidation authority with respect to a specific patent.” 

Husky’s former president, a co-inventor of the patent at issue, assigned his rights in the patent to Husky and then left to form Athena. Athena later challenged the patent with a petition for IPR. Husky argued that assignor estoppel barred Athena from filing the petition.  The Board rejected this argument and instituted review, arguing that 35 U.S.C. § 311 allowed anyone who is not the owner of a patent to file an IPR. The Board’s final written decision found some claims unpatentable.  Husky appealed the decision to institute.

Applying a newly enunciated test for determining when the Federal Circuit can review a challenge to an institution decision, the Federal Circuit concluded that the Board’s decision that assignor estoppel did not prevent the filing of IPRs was too closely related to the statutes governing institution of IPRs for the Federal Circuit to review.  Judge Plager dissented from this portion of the decision, arguing that either § 311 is not closely related to the statutes governing decisions to institute or the question exceeded the scope of the section of the statutes related to institution.