A series of Supreme Court cases has clarified that not all issues that arise in IPR are appealable. Thus, in addition to considering the issue of standing, which we previously discussed, a party considering appeal must also determine whether the issue it would want review can even be appealed. This post, which is the second in a series about judicial review of IPR, addresses a second trap for the unwary: the limited scope of permitted appeal.
Section 314(d) prohibits appeal of the PTAB’s decision “whether to institute [IPR] under this section.” Some interpreted that as limiting appeal only of the Institution Decision’s determination under Section 314(a) that the petition’s unpatentability arguments are sufficiently strong to deserve institution. The Supreme Court rejected that interpretation in Cuozzo v. Lee, 136 S. Ct. 2131 (2016), applying the appeal bar to the related determination under a different section that the petition was written with sufficient “particularity.”
For several years after Cuozzo, it appeared to some that the issues decided in the Institution Decision could be distinguished as either unappealable determinations regarding the strength of the petitioners’ unpatentability arguments or appealable determinations about the PTAB’s statutory authority. For example, in Wi-Fi One v. Broadcom, 878 F.3d 1364 (Fed. Cir. 2018), the Federal Circuit allowed an appeal of the Institution Decision’s conclusion regarding the PTAB’s statutory authority under the one-year time bar in Section 315(b).
The Supreme Court’s next case addressing the appealability of IPR decisions, SAS v. Iancu, 138 S. Ct. 1348 (2018), seemed to reinforce Wi-Fi One. The Court’s decision in SAS could be read as characterizing Cuozzo as barring appeal only as to the Institution Decision’s initial assessment of the merits of the patentability arguments in the petition. The Court, thus, allowed an appeal challenging the PTAB’s statutory authority to partially institute petitions.
But earlier this year, the Supreme Court returned to the issue in Thryv v. Click-To-Call, 140 S. Ct. 1367 (2020), holding that appeal is barred as to more than just the Institution Decision’s initial assessment of patentability. Thryv held that appeal was also barred as to the Institution Decision’s application of the one-year time bar—the issue the Wi-Fi One held was appealable. Subsequently, the Federal Circuit in ESIP v. Puzhen, 958 F.3d 1378 (Fed. Cir. 2020), applied the appeal bar to an appeal of the Institution Decision’s conclusion that the petition named all “real parties in interest,” another limit on the PTAB’s statutory authority.
The most recent wrinkle is the Federal Circuit’s decision in Facebook v. Windy City, 973 F.3d 1321 (Fed. Cir. Sept. 4, 2020), which held that parties could appeal the PTAB’s decision to join a time-barred IPR to an already-instituted IPR. The Federal Circuit’s conclusion is notable since the decision on joinder is typically made with the Institution Decision, but the Federal Circuit reasoned that it is a different decision and so not subject to Section 314(d) appeal bar.
Parties to IPR should think carefully about whether determinations made in or with the Institution Decision are appealable. While SAS indicates that some determinations made in the Institution Decision but that impact the Final Written Decision are appealable, Thryv indicates that the appeal bar is broad, and Facebook demonstrates that issues about the appeal bar’s scope continue to be litigated.