Michelle Armond

Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB) often occur in parallel to district court cases. Patent owners whose patent rights survive IPR may return to district court at a distinct advantage, not only by emerging with their patent rights intact, but also by capitalizing on events during the IPR and using them to their advantage in district court litigation. Real-party-in-interest disputes can be hotly contested before the Board. An order from the Northern District of Illinois shows that these disputes can have larger significance and impact petitioners in litigation. In that order, the Illinois federal court relied on the Board’s fact-finding from an IPR dispute over the petitioner’s identification of real-parties-in-interest to find that petitioner had waived the attorney-client privilege in the litigation. RTC Indus., Inc. v. Fasteners for Retail, Inc., No. 17-cv-03595, 2019 WL 5003681 (N.D. Ill. Oct. 8, 2019).

This article reviews recent Federal Circuit and Supreme Court decisions addressing the scope of appellate review of institution of inter partes review (IPR) by the Patent Trial and Appeal Board. The America Invents Act, 35 U.S.C. § 314(d), provides that: “[t]he determination… whether to institute an inter partes review under this section shall be final and nonappealable.” Federal courts initially interpreted Section 314(d) to bar appellate review of institution decisions entirely. However, recent decisions have narrowed Section 314(d) and expanded the scope of appellate review of matters decided by the Board at institution. This article will review decisions interpreting Section 314(d) to date, and explain how recent precedents have created new opportunities for appellate review of the Board’s decisionmaking in IPR proceedings.