Disappointed that PTAB declined inter partes patent review? Tough, EDVA Judge rules
The Patent and Trademark Board’s decision on whether to grant inter partes review cannot be challenged in court. In Medtronic, Inc. v. Lee, 1:15-cv-946 (E.D. Va. Jan. 21, 2016), after the PTAB terminated an inter partes review seeking to determine the validity of two patents, the petitioner appealed the decision to federal court. But Judge Lee of the Eastern District of Virginia granted defendant’s motion to dismiss, holding that the court lacked subject-matter jurisdiction to hear the appeal because § 314 of the America Invents Act (AIA) precludes judicial review.
The case began with a patent infringement suit against Cardiocom, LLC, which prompted Cardiocom to file a petition for an inter partes review. Medtronic acquired Cardiocom while the petition was pending, and after the PTAB declined to grant Cardiocom’s petition, Medtronic filed its own petition to review the very same patents. The PTAB initially granted Medtronic’s petition, but after further discovery and briefing, determined that Cardiocom should have been named as a real party in interest in Medtronic’s petition and terminated the inter partes review proceedings.
Medtronic challenged the PTAB’s decision in federal court under the Administrative Procedure Act, claiming that 5 U.S.C. § 704 allows judicial review of an agency action when no other adequate remedy exists. But the district court held that, while the AIA evinces a strong presumption of judicial reviewability, that presumption is rebutted when a statutory provision explicitly precludes such review. Here, § 314 of the AIA expressly provides that the PTAB’s decision whether to institute inter partes review “shall be final and nonappealable.” The district court further held that it makes no differences whether the PTAB makes its decision at the outset of a request for inter partes review or, as in this case, after previously instituting review proceedings.
The lesson? While the AIA allows appeals of final decisions on the merits by the PTAB, it bars review of PTAB determinations at the decision-to-institute stage.