Just as inter parties review proceedings (“IPRs”) are limited in scope, addressing invalidity based only on patents and printed publications, practitioners should keep in mind that appellate review of United States Patent Trial and Appeal Board (“Board”) decisions from IPRs is similarly constrained. Indeed, much of what occurs in front of the Board is not reviewable by the Federal Circuit. Under 35 U.S.C. § 314(d), a determination by the Board about whether or not to institute an IPR is not appealable. And, in a recent precedential decision, the Federal Circuit found that its inability to review an institution decision can encompass not only the institution decision itself, but also additional Board rulings that occur prior to an IPR’s institution.
In Achates Reference Publishing, Inc. v. Apple Inc., No. 2014-1767 (Fed. Cir. Sept. 30, 2015), the patent holder, Achates, appealed following the Board’s final written decision of unpatentability as to each of Achates’ patents’ claims. The patents themselves were also asserted in co-pending district court litigation, where Achates sued QuickOffice, Inc. and other defendants for infringement. It was not until a year later, however, that Apple, the IPR petitioner, was added to the suit. Continue reading this entry