In a recent case affirming the PTAB’s final decision of invalidity, the Federal Circuit held that it lacks jurisdiction to review whether the Board improperly instituted a CBM Review on a ground not asserted in the petition. SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307 (Fed. Cir. 2015). The Federal Circuit, however, reiterated that it has jurisdiction to review whether the Board improperly determined that the patents qualify as CBM patents.

While 35 U.S.C. § 324(e), like its IPR counterpart § 314(e), bars appellate review of the Board’s determination of whether to institute a CBM Review, the Federal Circuit held in Versata (as we discussed here) that the Board’s determination of an issue that affects or limits its authority to render a final decision invalidating a patent (e.g., whether patents qualify as CBM patents) is reviewable—even if the Board “does not revisit the issue” in its final written decision.

In SightSound, Apple filed CBM petitions challenging SightSound’s patents that disclose methods for the electronic sale and distribution of digital audio and video signals. Although Apple had asserted anticipation grounds only, the Board, “exercis[ing its] discretion,” instituted trial additionally on obviousness grounds. In its final written decision, the Board reaffirmed its institution decision, explaining that Apple’s petitions supported the obviousness grounds based on its detailed explanation of the references. The Board ultimately held that the challenged claims were invalid as obvious—though not as anticipated.

On appeal, SightSound challenged the final decision by arguing that the Board improperly instituted on the unasserted grounds. SightSound’s argument, the Federal Circuit held, was foreclosed by its decision in Cuozzo, which held that institution of an IPR petition on a ground that relied upon references not cited in the petition is not reviewable. Similar to its rationale in Cuozzo, the Federal Circuit explained that the CBM statute “does not limit the Board’s authority at the final decision stage to grounds alleged in the CBM petitions.”

The Federal Circuit therefore held that the Board’s decision to institute on grounds not raised in the petitions is unreviewable. However, echoing its reasoning in Versata, the Federal Circuit held that the question of whether the patents qualify as CBM patents is reviewable because it “is a limitation on the Board’s authority to issue a final decision.”

As SightSound illustrates, the Federal Circuit’s opinions regarding which institution issues are and are not reviewable to some extent build upon and harmonize its Cuozzo opinion. Recently, however, the Supreme Court granted certiorari in Cuozzo, indicating that it will review the issue of whether the Board’s decision whether to institute an IPR proceeding is judicially unreviewable. Therefore, it remains to be seen whether the Federal Circuit’s approach in Cuozzo, Sightsound, and other cases regarding the reviewability of institution decisions will ultimately be approved by the Supreme Court.