Earlier this year, the Court of Appeals for the Federal Circuit issued a series of three decisions in cases involving appeals from a Patent Trial and Appeal Board’s (“PTAB’s”) institution, or non-institution, of Inter Partes Review (“IPR”). In relying on the wording of 35 U.S.C. § 314(d),1 which establishes the procedures for the institution of an IPR, the Federal Circuit dismissed all three appeals, emphasizing that the IPR statutes2 only authorize appeals to the Federal Circuit for final written decisions of the PTAB.3
St. Jude Medical v. Volcano Corp.
In St. Jude Medical, Cardiology Division, Inc. v. Volcano Corporation, 749 F.3d 1373 (Fed. Cir. 2014), the Federal Circuit declined to review the PTAB’s decision not to institute an IPR in response to St. Jude’ April 2013 IPR petition in view of the disposition of an infringement action that occurred more than one year before the filing of the petition. Specifically, St. Jude brought suit against Volcano in 2010 in U.S. District Court for the District of Delaware alleging infringement of certain patents.4 Later that year, Volcano filed a counterclaim against St. Jude asserting infringement of U.S. Patent No. 7,134,994 (the “’994 patent”) -- the same patent at issue in St. Jude’s IPR petition.5 In 2012, based on the stipulations of the parties, the district court dismissed all claims relating to the ’994 patent.6
In denying St. Jude’s IPR petition, the PTAB determined that “the phrase ‘complaint alleging infringement of the patent,’ as used in § 315(b), is sufficiently broad to include a counterclaim that alleges infringement of the patent.”7Accordingly, the PTAB denied the petition because it was not filed within one year of Volcano’s service of the counterclaim against St. Jude alleging infringement of the ’994 patent, as required by § 315(b).8 On appeal, the Federal Circuit also declined to review the PTAB’s decision, because the Federal Circuit determined that § 319 limits appeals of IPRs to a “final written decision” as defined by § 318.9 10
In re Dominion Dealer Solutions
In a second case, In re Dominion Dealer Solutions, LLC., 749 F.3d 1379 (Fed. Cir. 2014), the Federal Circuit denied Dominion’s petition for writ of mandamus to vacate the PTAB’s decision not to institute an IPR petition. This case stemmed from the PTAB’s decision that Dominion’s IPR petitions failed to show “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged,” as required under § 314(a).11 In referencing the line of reasoning stated in St. Jude, the Federal Circuit reiterated that an appeal of the PTAB’s non-institution decision is precluded by the statutory provisions addressing IPR petitions.12 Accordingly, the Federal Circuit concluded that Dominion had no “clear and indisputable” right to appeal a non-institution decision directly to the Federal Circuit, including by way of mandamus.13
In re The Procter and Gamble Company
In the last case, In re the Procter Gamble Company, 749 F.3d 1376 (Fed. Cir. 2014), the Federal Circuit denied Procter & Gamble’s (“P&G’s”) petition for writ of mandamus to direct the PTAB to withdraw the institutions of certain IPR petitions of P&G’s patents. Prior to the filing of the IPR petitions, the petitioner filed a declaratory judgment against P&G on the patents at issue in the U.S. District Court for the District of Delaware and then voluntarily dismissed the case without prejudice.14 P&G argued that the earlier declaratory-judgment action barred the institution of an IPR under § 315(a)(1).15 The PTAB disagreed, explaining that because the declaratory-judgment action was dismissed without prejudice, “[i]n the context of § 315(a)(1), the action never existed.”16 On appeal, the Federal Circuit referenced its analyses in St. Jude and Dominion, and concluded that P&G had no clear and indisputable right to the Federal Circuit’s immediate review of the decision to institute an IPR.17 Interestingly, the Federal Circuit declined to address the question of whether the PTAB’s decision to institute the IPR can be challenged following a final written decision, stating that the question can be addressed after the filing of an appeal under § 319.
As evident through these three cases, the Federal Circuit has declined to second guess the PTAB’s decisions on whether or not to institute an IPR given the explicit language of § 314(d) and prior to a final written decision under § 318(a). In particular, if the PTAB decides not to institute an IPR, the petitioner has no further recourse. However, if the PTAB decides to institute an IPR and the IPR proceeds to a final written decision, the patent holder appears to have an opportunity to challenge on appeal the institution of the IPR, in addition to other issues, under section § 319.