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