In three recent decisions, the CAFC addressed whether the PTAB’s decision to institute an IPR is appealable.

For an IPR petition to be instituted, it must show a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. According to the statute, the PTAB’s decision whether to institute is “final and nonappealable.”

In St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014), the petitioner filed an IPR petition over two years, after being served with an infringement counterclaim in district court. Citing 35 U.S.C. § 315, the PTAB declined to institute because the petition was filed more than one year after the filing of an infringement suit. The petitioner appealed the non-institution decision to the CAFC. The CAFC dismissed the appeal, finding that it had no jurisdiction due to the explicit bar on appeals in 35 U.S.C. § 314.

In In re Dominion Dealer Solutions, LLC, 749 F.3d 1379 (Fed. Cir. 2014), which was issued the same day as the St. Jude decision, a timely IPR petition was denied institution after the PTAB determined there was not a reasonable likelihood that the petitioner would prevail with respect to at least one claim. A writ of mandamus was filed by the petitioner. For mandamus to be granted three conditions must be satisfied: 1) the petitioner must show a “clear and indisputable” right to relief; 2) the petitioner must show a “lack [of] adequate means to obtain relief”; and 3) the CAFC must determine, in its discretion, that the writ is “appropriate under the circumstances.”  Holding that the first condition was not met because of the explicit bar on appeals of non-institution decisions in 35 U.S.C. § 314, the CAFC denied the petition for mandamus relief.

In In re The Procter & Gamble Company,  749 F.3d 1376 (Fed. Cir. 2014), a timely petition for IPR was granted. Seeking to overturn the institution decision, a writ of mandamus was filed by the patent owner. The CAFC denied the writ because there was no “clear and indisputable” right to relief (citing Dominion), and therefore the CAFC had no statutory jurisdiction (citing St. Jude).

These decisions illustrate that the CAFC is strictly interpreting § 314 and is therefore unlikely to grant an appeal or mandamus relief for a PTAB institution or non-institution decision. In light of this, a patent owner’s only recourse when faced with a decision to institute appears to be filing a request for rehearing with the Board, or failing that, prevailing on the merits in the final written decision. Conversely, a petitioner’s only recourse when facing a non-institution decision appears to be filing a request for rehearing with the Board, or perhaps filing a new IPR petition if the one-year bar in § 315 does not yet apply.