SCOTUS Reverses The Federal Circuit Again: IPR Time-Bar Determinations Are Not Judicially Reviewable
By way of background, before an IPR can be instituted, the PTO must ensure that certain statutory requirements are met. Of those requirements is the above noted § 315(b) time bar. If the PTO is satisfied that an IPR petition is timely, and the remaining statutory provisions are similarly met, the IPR is instituted and proceeds to a final written decision, which may be appealed to the Federal Circuit. However, not all aspects of the Board’s final written decision are appealable. Under § 314(d), the “determination by the [PTO] whether to institute an inter partes review under this section shall be final and nonappealable.” In other words, if the PTO determines not to institute an IPR, that determination is nonappealable.
But what happens if the PTO determines to institute an IPR and the aggrieved patent owner believes that the IPR should have never been instituted in the first place? Before the Supreme Court’s decision in Click-to-Call, certain aspects of the PTO’s institution authority that were generally unrelated to the IPR’s technical merits were appealable (such as the PTO’s application of the § 315(b) time bar). Justice Ginsburg, writing for the Click-to-Call majority, concluded that this prior finding of judicial reviewability was incorrect:
Interestingly, it was through the prior reviewability of § 315(b) time-bar issues that the PTO’s original interpretation that a time bar was not triggered if a prior patent-infringement complaint was dismissed without prejudice was determined to be incorrect. We now know that a time bar may be triggered even if a previously-filed lawsuit was dismissed without prejudice. While we do not believe that the PTO will change its practice on this issue, following Click-to-Call’s holding, could the PTO simply reverse course without any judicial oversight?
Absent a statutory fix, which seems unlikely, “[l]itigants and lower courts alike will just have to wait and see.”