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Client Alerts

Very Little, and Maybe Nothing, Can Be Appealed From a Patent Office Decision to Institute (or Not Institute) IPR

February 4, 2015

Client Alerts

Very Little, and Maybe Nothing, Can Be Appealed From a Patent Office Decision to Institute (or Not Institute) IPR

February 4, 2015

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In re Cuozzo Speed Techs., LLC, — F.3d – (Fed. Cir. Feb. 4, 2015) (Newman (dissent), Clevenger, DYK)

Fed Cir affirms PTO decision to reject claims in inter partes review proceeding.

Jurisdiction:  The court started by considering whether it could hear Cuozzo’s complaint that the Board improperly instituted the IPR on grounds different than those asserted by the Petitioner (which had since left the case after a settlement).  The Court decided it had no jurisdiction because the institution decision was made under 35 USC 314, and that section says its decisions are ”final and unappealable.”  Cuozzo had distinguished its appeal from that in St. Jude v. Volcano, where the appeal had been taken from the institution decision itself rather than from a final decision in the IPR, but the Fed Cir noted that Section 314(d) “must be read to bar review of all institution decisions, even after the Board issues a final decision.”  Analogizing to review of reexamination decisions, the court noted that any errors at institution are “washed clean” by subsequent proceedings, which the Fed Cir can review.  The Fed Cir noted that prior mandamus decisions (In re Dominion and In re Proctor & Gamble) had not decided whether mandamus can be brought in this sort of situation and the court would not do so now – though the court did then comment on the applicability of mandamus to the current case.

For more on this case and its implications, continue reading at fishpostgrant.com

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