Reviewability of PTAB Estoppel Decisions

| Jeremiah S. Helm, Ph.D.


Before Lourie, Wallach, and Chen. Appeal from the Patent Trial and Appeal Board.

Summary: 35 U.S.C. § 314(d) does not preclude Federal Circuit review of the Patent Trial and Appeal Board’s post-institution application of § 315(e)(1) estoppel

Uniloc’s patent, U.S. Patent No. 9,995,433 (’433 patent) was the subject of multiple petitions for inter partes review (“IPR”), including two petitions filed by Facebook, and one petition filed by Apple. While Facebook’s petitions were pending, the Board instituted Apple’s IPR. Facebook then filed a follow-on petition substantively identical to Apple’s instituted petition and moved to join Apple’s IPR. The Board instituted Facebook’s follow-on petition and granted the motion. In the meantime, yet another challenger, LG Electronics, filed two petitions substantively identical to the two original Facebook petitions. The Board eventually instituted Facebook’s original petitions, LG’s follow-on petitions, and granted LG’s motion to join the Facebook IPRs.

Two months after instituting LG’s follow-on IPRs, the Board issued a final written decision in the Apple IPR upholding patentability of all challenged claims. This triggered the estoppel provision of §315(e)(1) as to Facebook, and the Board estopped Facebook from maintaining its challenge for any claim upheld in the Apple IPR. §315(e)(1) estoppel prevents a petitioner in an IPR with a final written decision from later raising “any ground that the petitioner raised or reasonably could have raised during that inter partes review” in a subsequent USPTO action, civil action, or ITC proceeding. The Board, however, held that Facebook’s estoppel did not extend to LG. The Board eventually issued a final written decision in the Facebook/LG IPRs holding all challenged claims unpatentable.

Uniloc appealed, arguing that LG was a real party in interest or privy of Facebook, and therefore should be subject to estoppel. Before reaching Uniloc’s argument, the Federal Circuit first considered whether §314(d), which makes the Board’s institution decision nonappealable, also precludes judicial review of the Board’s post-institution application of estoppel. The Federal Circuit reasoned that because any estoppel in this case only arose post-institution, it was separate from the Board’s earlier institution decision. Thus, because estoppel could not have applied at the time of institution, the Federal Circuit held §314(d) likewise does not bar appellate review of the Board’s post-institution estoppel decision. Turning to the Uniloc’s underlying challenge, the Federal Circuit affirmed the Board’s conclusion that LG was not a real party in interest or privy of Facebook.

Editor: Paul Stewart