Federal Circuit Panel Concludes That It Lacks Jurisdiction to Review PTAB Decision Terminating IPR Proceeding

Recently, the Federal Circuit held that it lacks jurisdiction to review non-final Patent Trial and Appeal Board (“PTAB”) decisions, such as decisions to vacate or terminate a post-grant proceeding.

In GEA Process Engineering, Inc. v. Steuben Foods, Inc., the Federal Circuit denied GEA’s petition for writ of mandamus directing the PTAB to withdraw an order in which it terminated GEA’s five pending IPR proceedings on the grounds that these IPRs should have never been instituted. The PTAB reasoned that GEA failed to identify all real-parties-in-interest and, thus, the petitions were incomplete.

In dismissing the appeal, the Federal Circuit held that federal statute only authorized appeals from a “final written decision of the Board.” Further, it noted, “[t]his court’s authority to review IPR decisions … is limited to the [PTAB’s] decision on the merits of the review, after it conducts the proceeding that the Director has instituted.” Thus, the court lacked jurisdiction here “because the [PTAB’s] made no decision ‘with respect to patentability’ of any claim.”

This decision also reaffirms the court’s decisions in St. Jude Med., Cardiology Div., Inc. v. Volcano Corp. and GTNX, Inc. v. INTTRA, Inc., in which the court held that it only has jurisdiction to review final written decisions with respect to patentability. Accordingly, the court noted that it is irrelevant that “the [PTAB] initially instituted the proceedings but subsequently vacated the institution decisions and terminated the proceedings,” because “the statutory language [is] not limited to an initial determination to the exclusion of a determination on reconsideration.” Further, it noted it is also irrelevant that this case involved inter partes review rather than covered business method review as in GTNX, because institution decisions are final and nonappealable in both types of proceedings.

Gibbons P.C. will continue to monitor developments in the Federal Circuit’s review of IPR proceedings.

Christopher H. Strate is a Director in the Gibbons Intellectual Property Department.
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