Last Week in the Federal Circuit (March 8-12): The NeverEnding Story of the AIA’s No-Appeal Bar

Wow—it was a busy week at the Court last week.  Lots of opinions, and lots of precedential ones.  There were lots of good choices out there, so we sort of threw a dart at a board to see which one to write about.  In the end, we decided to look at the latest chapter in the never-ending story of the AIA's no-appeal bar.

Precedential opinions: 10

Non-precedential opinions: 10

Rule 36: 6

Longest pending case from argument:  Cajun Services Unlimited, LLC v. Benton Energy Service Co., No. 20-1367 (158 days)

Shortest pending case from argument (non-Rule 36): Neapco Drivelines LLC v. American Axle & Manufacturing, No. 20-1858 (8 days)

Case of the week: Uniloc 2017 LLC v. Facebook Inc., No. 19-1688 (Mar. 9, 2021)

Panel:  Judges Lourie, Wallach, and Chen, with Judge Chen writing the opinion.

You should read this case if: you have a case involving a question about the scope of 35 U.S.C. § 314(d)’s no-appeal bar

If you follow IPRs, you’re by now familiar with 35 U.S.C. § 314(d), which has been the subject of multiple Supreme Court decisions (Cuozzo, SAS, Thryv).  Section 314(d) is titled “No Appeal” and declares that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”  In Cuozzo, the Supreme Court said that provision overcomes the strong presumption of judicial review for “questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.”

So what happens when the Board institutes review but then the patent owner says post-institution developments require the Board to terminate the review (or at least terminate some petitioners’ involvement)—is judicial review precluded because the Board’s decision whether to terminate is “closely tied to” institution?  The Federal Circuit said no, at least when the alleged reason for termination is statutory estoppel based on events occurring after institution.  (The decision also is worth reading for what it says on the merits of the Board’s estoppel determinations, but we’re focusing on appealability today.)

The relevant facts are that after the Board issued its institution decisions in the IPRs in this case, the Board issued a final written decision in a different IPR on the same patent.  Uniloc argued to the Board that the final written decision in that other IPR triggered statutory estoppel because at least one party was involved in both proceedings.  The Board generally rejected those arguments and allowed the IPRs to proceed, ultimately holding that Uniloc’s challenged claims were unpatentable.  Uniloc appealed, asking the Federal Circuit to review the Board’s estoppel determinations (among other things).

The Federal Circuit held the no-appeal bar inapplicable on those facts.  It thought it critical that “no cause for termination at the time of petition existed and the basis for termination developed while the proceeding was ongoing.”  That fact distinguished this case from past ones where the bar had applied to Board estoppel determinations—in past cases, the post-institution estoppel determination was about facts that existed at the time of institution, such as whether a petitioner had properly named all real parties in interest when filing the petition.  The Court held that the text of the estoppel provision (35 U.S.C. § 315(e)) supports its view—it prevents petitioners from “request[ing] or maintain[ing] a proceeding” once estoppel arises.  “Section 315(e)(1)’s use of ‘maintain’ contemplates that the estoppel provision ‘governs at any stage of a subsequent proceeding,’” suggesting estoppel determinations are not “closely tied” to institution in every case.  Because the Board’s “no estoppel” decision “was later than and separate from its earlier institution decision,” judicial review was available.

One question this case raises is whether the availability of review is one sided.  Here, because the Board sided with the patent challenger, holding estoppel inapplicable, it proceeded to a final written decision.  The Federal Circuit emphasized that “the question before” it was “whether 35 U.S.C. § 314(d) statutorily precludes judicial review, following a final written decision in an inter partes review proceeding, of a challenge to the Board’s” no-estoppel determination.  But what if the Board had sided with the patent owner, finding that estoppel applied and terminating review without issuing a final written decision on patentability?  Would review be available then?  Or does this case create another asymmetry in the availability of judicial review, as the Federal Circuit’s Wi-Fi One decision did for time-bar determinations (before Thryv overturned it)?  Maybe that'll be the next chapter in the no-appeal-bar story.