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