IPR Real-Parties-In-Interest Determination Is Final and Non-Appealable

Knobbe Martens
Contact

Knobbe Martens

ESIP SERIES 2, LLC V. PUZHEN LIFE USA, LLC

Before Reyna, Lourie, and Hughes. Appeal from the Patent Trial and Appeal Board.

Summary: The PTAB’s determination that an IPR petition identifies all real parties in interest is final and non-appealable.

Puzhen Life USA, LLC (“Puzhen”) petitioned to institute inter partes review (“IPR”) of a patent owned by ESIP Series 2, LLC (“ESIP”). The Patent Trial and Appeal Board (“PTAB”) considered Puzhen’s petition and instituted IPR. ESIP argued the petition was barred from institution for failure to identify all real parties in interest under 35 U.S.C. § 312(a)(2). In a final written decision, the PTAB rejected ESIP’s argument and determined the instituted patent claims were invalid as obvious. ESIP appealed.

The Federal Circuit declined to review the PTAB’s real-parties-in-interest decision and affirmed the determination of obviousness. It held that its review of the real-parties-in-interest determination is precluded under 35 U.S.C. § 314(d), which states that IPR institution decisions are final and non-appealable. The Federal Circuit cited precedent applying § 314(d) to bar appellate review of “questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter parties review.” It examined the Supreme Court’s decision in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016), that § 314(d) bars appellate review of whether IPR petitions identify with particularity certain claims, grounds, and evidence required by 35 U.S.C. § 312(a)(3). It also discussed the Supreme Court’s decision in Thryv, Inc v. Click-To-Call Techs., LP, 140 S. Ct. 1367 (2020), that § 314(d) bars appellate review of PTAB decisions concerning application of the one-year time bar set forth in § 315(b). In view of Cuozzo and Click-to-Call, the Federal Circuit determined that the PTAB’s real-parties-in-interest determination “raises an ordinary dispute about the application of an institution-related statute,” and that § 314(d) precludes review of that determination.

Editor: Paul Stewart

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.

© Knobbe Martens | Attorney Advertising

Written by:

Knobbe Martens
Contact
more
less

Knobbe Martens 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.