Which PTAB Decisions Are Appealable to the CAFC and Which Are Not? The Federal Circuit Court of Appeals Weighs in Again…

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Since the enactment of the America Invents Act and the creation of inter partes review (IPR) proceedings, institution decisions have not been appealable according to statute. Dissatisfied litigants have still tried to appeal some institution decisions. As a result, a number of appellate decisions have discussed various scenarios regarding whether or not a decision that seems like it should not be appealable may or may not be actually appealable and vice versa. In Uniloc 2017 LLC v. Facebook Inc. (“Uniloc 2017”),[1] the United States Court of Appeals for the Federal Circuit (CAFC) weighs in again on this question, making yet another distinction between appealable and non-appealable IPR decisions.

The procedural history of Uniloc 2017 is complicated. There were multiple IPR proceedings and various events underlying the ultimate appeal by Uniloc 2017 from two consolidated IPR decisions of the Patent Trial and Appeal Board (PTAB) finding various claims of U.S. Patent No. 8,995,433 unpatentable. 

The following timeline lists the salient events:

Date	Event
November 14, 2016	Apple Inc. files the ’225 IPR petition challenging various claims of the ’433 patent.
May 11, 2017	Facebook Inc. files two IPR petitions: 1.      The ’1427 IPR, challenging claims 1-8 of the ’433 patent; and 2.      The ’1428 IPR, challenging claims 9, 11, 12, 14-17, 25, and 26 of the ’433 patent.
June 16, 2017	Facebook files a third IPR petition, identical in substance to Apple’s ’225 IPR petition, and files a motion to join Apple’s ’225 IPR.
September 11, 2017	LG files two IPR petitions, identical in substance to Facebook’s ’1427 and ’1428 IPR petitions, and files motions to join both of Facebook’s IPRs.
October 3, 2017	PTAB institutes Facebook’s third IPR and grants motion to join Apple’s ’225 IPR.
December 4, 2017	PTAB institutes Facebook’s ’1427 and ’1428 IPRs. In the ’1427 IPR institution decision, PTAB orders the parties to brief applicability, if any, of 35 U.S.C. § 315(e)(1)’s estoppel provisions against Facebook, given the anticipated soon-to-be-issued Final Written Decision (FWD) in the Apple ’225 IPR, to which Facebook was a joined party. PTAB did not order similar briefing in the ’1428 IPR. At this time, LG’s petitions and motions to join Facebook’s ’1427 and ’1428 IPRs were pending.
March 6, 2018	PTAB institutes IPRs based on LG’s petitions and grants LG’s motion to join Facebook’s ’1427 and ’1428 IPRs.
March 23, 2018	Uniloc 2017 filed its Patent Owner Responses, argued in the ’1427 IPR that LG should be barred from maintaining the ’1427 IPR once PTAB issues its FWD in the Apple ’225 IPR because LG is estopped as a Real Party in Interest (RPI) or privy to Facebook.
May 23, 2018	PTAB issued FWD in Apple ’225 IPR, upholding patentability of all challenged claims.
May 29, 2018	PTAB issued a decision in the ’1427 IPR dismissing-in-part Facebook from the IPR, finding Facebook estopped under § 315(e)(1) as to claims 1-6 and 8 of the ’433 patent, but not estopped as to claim 7 because estoppel provisions of §315(e)(1) apply only to grounds the petitioner raised or reasonably could have raised “with respect to that claim,” and claim 7 was not challenged in the Apple ’225 IPR.  PTAB also concluded that Facebook’s dismissal did not limit LG’s participation in any way. PTAB allowed LG to proceed as to all challenged claims, while limiting Facebook’s participation to claim 7.
November 20, 2018	PTAB issued FWD in the consolidated IPRs, finding all challenged claims unpatentable.

Uniloc 2017 appealed PTAB’s decision regarding applicability of IPR estoppel to LG and Facebook, as well as its substantive unpatentability findings.

As a threshold issue, the CAFC considered whether it could review applicability of IPR estoppel under the circumstances of this case. The Court of Appeals acknowledged that questions can arise as to whether it has the authority to review certain matters addressed in an IPR that are not directly related to the ultimate patentability decisions that PTAB renders in a FWD. This initial question was “whether 35 U.S.C. § 315(d) statutorily precludes judicial review, following a final written decision in an [IPR] proceeding, of a challenge to the Board’s conclusion that under § 315(e)(1) a petitioner is not estopped from maintaining the proceeding before it.” In this case, the CAFC concluded it was not statutorily precluded from reviewing such a challenge.

According to the AIA’s plain language in § 314(d), institution decisions are “final and non-appealable.” Application of this seemingly simple rule is not always so clear. In Uniloc 2017 the CAFC reviewed the important controlling precedential case law in an attempt to explain the distinction between institution and other non-final PTAB decisions that are appealable and those that are not.

Three Supreme Court decisions, Cuozzo[2], SAS[3], and Thryv[4], have addressed whether 35 U.S.C. § 314(d) precludes appellate review of a PTAB decision. In Cuozzo, the Supreme Court held that § 314(d) precludes appeal of PTAB’s determination that an IPR petition warranted review under § 312(a)(3), which requires a petitioner to identify the grounds of the challenge with particularity. Then, in SAS, the Supreme Court held that § 314(d) does not preclude appeal of a rejected argument that PTAB “exceeded its statutory authority” in limiting an IPR to fewer than all claims challenged in the petition. Then, in Thryv, the Supreme Court held that § 314(d) precludes appellate review of PTAB’s determination of whether or not the one-year time bar under § 315(b) applies to prevent institution of an IPR. The Supreme Court reasoned that because §315(b) “expressly governs institution and nothing more,” an argument that a petition falls under § 315(b) is a contention that the agency should have refused to institute an IPR. and that § 314(d) thus precludes appellate review of decisions on that issue, as well.

The CAFC then reviewed its own cases holding that § 314(d) precludes appellate review of PTAB’s decision to terminate an IPR in view of a party’s failure to name all RPIs because PTAB’s reconsideration of that issue is “fairly characterized as a decision whether to institute proceedings,” and that a PTAB decision to not terminate a proceeding in view of a party’s alleged failure to name all RPIs is similarly not reviewable. The CAFC then noted that appellate review is available to challenge PTAB’s application of AIA’s statutory estoppel provisions where the estoppel-triggering event occurred after institution of the proceedings and, therefore, could not have affected the institution decision one way or the other, and that § 314(d) does not preclude appellate review of challenges to PTAB’s joinder decision as exceeding its § 315(c) statutory authority because that challenge concerned how an IPR proceeded after institution and, therefore, again was not related to the institution decision itself. 

Against this backdrop, the CAFC analyzed whether § 314(d) precluded judicial review of PTAB’s conclusion that LG was not estopped from maintaining its challenge against claims 1-6 and 8 of the ’433 patent after the issuance of the final written decision in the Apple ’225 IPR upholding patentability of those same claims.

Relying on the fact that the alleged estoppel-triggering event occurred after institution, the CAFC held that §314(d) did not preclude appellate review, finding no substantive difference between this case and its own previous decision in a nearly identical situation. Because the estoppel-triggering event occurred after institution of the proceeding in question, the CAFC concluded that applicability of the estoppel provision was sufficiently separate from the institution decision to not trigger § 314(d)’s appeal bar.

While these cases are nearly always procedurally complex and the results sometimes seem difficult to reconcile, a discernible rationale is emerging. Any appeal of a PTAB decision of the question of whether or not to institute an IPR that is based on events that are (1) tied to the petition itself or (2) only involve statutory provisions exclusively relating to the decision to institute, will almost certainly be precluded by the “no appeal” provision in § 314(d) of the AIA. On the other hand, appeals of PTAB determinations regarding applicability of the AIA’s provisions where the statutory-provision-triggering event occurred after institution are likely reviewable on appeal to the CAFC.