Holding: The Supreme Court held that although a party can appeal the substance of a PTAB Decision pursuant to 35 USC §141-144, a party cannot appeal the PTAB's discretionary authority and interpretation of the laws relating to institution of an IPR pursuant to 35 USC §314(d). It's their prerogative whether or not to institute an IPR and to proceed with the examination whether either party withdraws from the proceeding.
Once requested, the patent owner shall have the right to respond to the petition setting forth any reasons as to why the IPR should not be instituted (35 USC §313). If the Director decides to institute the IPR, the PTAB will proceed with its evaluation of the challenge to the claims’ validity (35 USC §316). A party dissatisfied with the written PTAB Decision may file an Appeal of the Decision to the Court of Appeals for the Federal Circuit (35 USC §319).
Pursuant to the analysis outlined below, the Court vacated the Federal Circuit Judgment and remanded the case back the CAFC with instructions to dismiss the appeal for lack of Appellate jurisdiction. Holding that although a party can appeal the substance of a PTAB Decision pursuant to 35 USC §141-144, a party cannot appeal the PTAB's discretionary authority and interpretation of the statutes relating to institution of an IPR pursuant to 35 USC §314(d).
The Court assessed that the purpose of timeliness requirement of §315(b) is to minimize the burdensome overlap between Inter Partes Review and Patent Infringement Litigation.
Click-to-Call contends that the Supreme Court should adopt its interpretation of §314(d), as it did in SAS Institute Inc. v. Iancu. However, the Court found that SAS Institute does not apply in this case for Click-to-Call's appeal does not challenge the manner in which the agency review proceeds after it initiates an IPR, but whether the Agency should have instituted the review at all.
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April M. Mosby, is the founder of Monarch IP Group, PLLC. With over 20 years of Patent Prosecution and Appellate experience preparing, prosecuting, and maintaining over 300 domestic and international patent applications (drafting over 60 Prevailing Appeal Briefs and over 600 Amendment Responses), April has protected client’s products and services in a timely cost-efficient manner with several Fortune 500 clients and various others. During her tenure on the Patent Trial and Appeal Board of the USPTO, she drafted over 500 Appellate Decisions. Her current practice also includes Trademark Prosecution and Copyright Prosecution. Additionally, she has substantive experience in Patent Licensing.