In Achates Reference Publishing, Inc. v. Apple Inc., Nos. 14-1767, -1788 (Fed. Cir. Sept. 30, 2015), the Federal Circuit held that it lacked jurisdiction to review the PTAB’s decision to institute IPRs of two patents asserted by Achates against Apple in district court.

Achates filed suit against several companies and joined Apple as a codefendant a year later. In response, Apple filed petitions for IPR of the asserted patents. Achates argued that the PTAB lacked authority to institute the IPRs because Apple did not comply with the requirement that an IPR be filed within one year of the start of litigation. The PTAB denied the argument, finding that none of the codefendants were real parties in interest or in privity with Apple, and instituted the IPRs.

On appeal, the Federal Circuit held that the PTAB’s determination on whether an IPR petition is timely is part of the decision to institute and, therefore, is nonappealable, even after a final written decision. The Court distinguished its earlier decision in Versata II, noting that the classification of a patent as a CBM in Versata II, although part of the institution decision, was a fundamental limitation on the PTAB’s ability to invalidate the patent. In contrast, in Achates, the Court found that the time bar was not.