PTAB Appeals Focused on Merits

The SCOTUS re-calibrated the PTAB’s appeal bar in Thryv, Inc v. Click-To-Call Techs., LP., explaining that potential violations of 35 U.S.C. § 315(b) were too closely related to the institution determination of the agency to escape the appeal bar. Since that time, the Federal Circuit has considered at least two additional issues that it may no longer have the ability to consider on appeal: RPI/privity disputes, and determinations that a patent qualifies as a Covered Business Method (CBM) patent.

As to RPI/privity, those disputes are now barred from appeal.

In ESIP Series 2, LLC v. Puzhen Life USA, LLC, (precedential) the Patent Owner argued that petitioner had failed to identify all “real parties in interest” and thus the Board erred when it considered institution of inter partes review. The Court found, post-Thryv, that the Board’s § 312(a)(2) real-party-in-interest determination is final and non-appealable, explaining (here):

" In Cuozzo Speed Techs., LLC v. Lee, the Supreme Court held that this Court is precluded from reviewing Board decisions concerning the “particularity” requirement under § 312(a)(3). . . . The Court further explained that “where a patent holder grounds its claim in a statute closely related to that decision to institute inter partes review, § 314(d) bars judicial review.” [¶] More recently, in Thryv, Inc v. Click-To-Call Techs., LP, the Supreme Court held that § 314(d) also precludes judicial review of the agency’s decision whether to apply the one-year time bar set forth in § 315(b)). The Court explained that “§ 315(b)’s time limitation is integral to, indeed a condition on, institution,” and that “a contention that a petition fails under § 315(b) is a contention that the agency should have refused ‘to institute an inter partes review.’” The Court concluded that a challenge to a petition’s timeliness under § 315(b) raises “an ordinary dispute about the application of” an institution-related statute and is barred from appellate review by § 314(d).

In view of Cuozzo and Click-to-Call, we find no principled reason why preclusion of judicial review under § 314(d) would not extend to a Board decision concerning the “real parties in interest” requirement of § 312(a)(2). ESIP’s contention that the Board failed to comply with § 312(a)(2) is “a contention that the agency should have refused to institute an inter partes review.” Indeed, ESIP expressly argues that the agency should have refused to institute inter partes review because of Puzhen’s failure to identify all “real parties in interest.” Accordingly, we hold that ESIP’s challenge to the Board’s “real parties in interest” determination “raises ‘an ordinary dispute about the application of’ an institution-related statute,” and that § 314(d) precludes our review of that determination.

As to review of CBM eligibility, during recent oral arguments in Apple v. ContentGuard Holdings Inc. the panel openly questioned reviewability post-Thryv. Ultimately, the Court was able to resolve the appeal without reaching the issue. My expectation (as it has been since 2016) is that the appeal bar will prevent the Federal Circuit’s consideration of this issue going forward.

Scott A. McKeown is an author of the Patents Post Grant