Review of Institution Decision Barred Unless Board Exceeds Its Authority — A Tale of Two Decisions, In Re: Cuozzo Speed Technologies and Versata v. SAP America

Authors: Linda Thayer, Rachel Emsley
Editor:  Aaron L. Parker

This past week, the Court of Appeals for the Federal Circuit (CAFC) issued two decisions regarding when the court may review PTAB decisions in an inter partes review (IPR) or post grant proceeding.

After denying en banc review, on July 8, 2014, the CAFC issued its panel rehearing decision in In re Cuozzo Speed Technologies, LLC, 14-1301 (Fed. Cir. Jul. 8, 2015), concluding that not only does 35 U.S.C. § 314(d) prohibit interlocutory review of the decision to institute IPR, it prohibits review of the institution decision even after a final written decision. Slip Op. at 6. In Cuozzo, the PTO instituted IPR of claims 10 and 14 on grounds not in the Petition. The Patent Owner argued that, according to § 312(a)(3), a Petition for IPR must identify “with particularity. . . the grounds on which the challenge to each claim is based,” and § 314(a) states that the Director may not institute an IPR unless the “information presented in the petition . . . shows there is reasonable likelihood that the petitioner would prevail.” Slip Op. at 5. Together, the Patent Owner argued, these two statutes preclude institution on grounds not presented in the Petition, and the institution decision should be reviewed. Continue reading

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IPR and CBM Statistics for Final Written Decisions Issued in June 2015

Authors: Daniel F. Klodowski, Elliot C. Cook
Editor: Aaron Parker

In the 36 Final Written Decisions issued by the Patent Trial and Appeal Board in June, the Board cancelled 446 (86.27%) of the instituted claims, and it held that 47 (9.09%) of the instituted claims were not proven unpatentable by a preponderance of the evidence.  Patent owners conceded 24 (4.64%) of the instituted claims through motions to amend.


On a per-case basis, no instituted or substitute claims survived in 26 (72.22%) of the decisions, all instituted claims survived in 5 (13.89%) of the decisions, and a mixed outcome occurred in 5 (13.89%) of the decisions.  A mixed outcome occurs where at least one instituted or substitute claim remains patentable, and at least one is cancelled, in a Board decision.

PTAB July_2

More detailed cumulative statistics on the Board’s IPR and CBM decisions, updated through July 1, 2015, are available here on the AIA Blog.

Lists of the top 10 PTAB judges by panel appearances and authored opinions are available here.

Numbers of final written decisions by technology center are available here.

Federal Circuit Lacks Jurisdiction to Review Institution Decisions

Author: James D. Stein
Editor:  Jeffrey A. Berkowitz

The Federal Circuit has ruled that it lacks jurisdiction to review a PTAB decision to vacate and terminate an IPR institution decision, either by appeal or writ of mandamus.

In GEA Process Eng’g, Inc. v. Steuben Foods, Inc., No. 15-1536 (Fed. Cir. Jun. 23, 2015), the Federal Circuit denied GEA Process’s parallel appeal and mandamus petition seeking review of the PTAB’s vacation of its institution decisions in IPR2014-00041, 00043, -00051, -00054, and -00055. In the IPRs, the PTAB initially instituted review but later vacated its institution decisions and terminated the proceedings after finding the petitions omitted GEA Process’s affiliate, GEA Procomac S.p.A, a real party-in-interest (RPI). Slip op. at 2-3. Correcting the petitions would have required granting a new filing date, but both petitioner parties were now time-barred under 35 U.S.C. §315(b), so the PTAB terminated the proceedings. See, e.g., IPR2014-00041, Paper No. 136 (Dec. 23, 2014). Continue reading

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