Federal Circuit Has Jurisdiction over Constitutional Questions in AIA Appeals

McDermott Will & Emery

McDermott Will & Emery

Addressing for the first time whether a district court has jurisdiction to hear constitutional challenges to the Patent Trial and Appeal Board’s (Board) final written decisions in an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit found that the Federal Circuit has jurisdiction over AIA appeals, including constitutional questions. Security People, Inc. v. Iancu, Case No. 2019-2118 (Fed. Cir. Aug. 20, 2020) (Hughes, J.).

Security People’s patent was challenged in an IPR, and the Board issued a final written decision invalidating all challenged claims. Security People appealed the Board’s decision to the Federal Circuit, which affirmed. The Supreme Court then denied Security People’s petition for certiorari. After the Supreme Court denied certiorari, Security People filed a lawsuit in the Northern District of California, challenging the Board’s final written decision as unconstitutional. The district court dismissed Security People’s claim because it lacked subject matter jurisdiction, citing the America Invents Act’s (AIA) provision giving the Federal Circuit jurisdiction over appeals from Board decisions in IPRs. Security People appealed.

Security People argued that because the Board lacks authority to consider constitutional claims, only a district court can hear factual issues underlying a constitutional challenge. Security People also argued that its constitutional challenge was not ripe until the Federal Circuit finally resolved the Board’s decision, and that it had to exhaust its claims on the merits before raising its constitutional claims.

The Federal Circuit disagreed. The Court found that in the rare instances where fact finding would be necessary for resolving a constitutional challenge, the Federal Circuit had authority to decide those factual issues through judicial notice. The Court explained that “finality” of the agency’s decision did not require the merits appeals to fully conclude before addressing constitutional issues, because the Board’s decision-making is complete when it issues a final written decision. In short, Security People was required to bring its constitutional challenge at the same time it challenged merits of the Board’s decision. The Court found its reasoning supported by the text, structure and history of the AIA, which gave the Federal Circuit wide authority to review Board decisions without any exception for constitutional challenges. The Court also reasoned that the Administrative Procedures Act’s (APA) general authorization to review agency action in the district courts does not override the specific framework in the AIA providing judicial review to the Federal Circuit. Indeed, there is no need to look to the APA’s general authorization in this regard, because the Federal Circuit is an adequate forum to resolve any issues challenged with respect to the Board’s final written decisions.

[View source.]

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McDermott Will & Emery | Attorney Advertising

Written by:

McDermott Will & Emery

McDermott Will & Emery on:

Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide
- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.