By Sue Gerber and Matt Johnson

Recently, we reported about the Supreme Court’s decision holding that the AIA’s “no appeal” provision in 35 U.S.C. § 314(d) means that the PTAB’s decision not to institute IPR because a petition is time barred under 35 U.S.C. § 315(b) (“Section 315(b)”) cannot be appealed.  Thryv, Inc. v. Click-to-Call Techs, L.P., No. 18-916, 2020 WL 1906544 (Apr. 20, 2020).  A similar issue came before the United States Court of Appeals for the Federal Circuit in Ruiz Food Products, Inc. v. MacroPoint, LLC, No. 19-2113, slip op. (Fed. Cir. June 24, 2020).

In Ruiz, the Federal Circuit was asked to resolve whether the “no appeal” provision also precludes appeal in a case where the PTAB found proceedings could not be properly instituted under 35 U.S.C. § 315(a) (“Section 315(a)”).  That section provides that “[a]n inter partes review may not be instituted if before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.”  In this case, the real party in interest had filed a declaratory judgment action before Ruiz petitioned for IPR, but it had dismissed the district court action without prejudice before any judgment was entered.  The PTAB instituted review because it believed at the time that a dismissal without prejudice nullified the effect of the filing of the declaratory judgment complaint.  Slip op. at 2.  When that understanding was overturned by the Supreme Court’s decision in Thryv, the PTAB reconsidered Ruiz’ petition and terminated the proceedings.  Id.

On appeal, the Federal Circuit found that, just like the situation in Thryv, institution decisions based on Section 315(b) are “clearly ‘a condition on’ institution” that may not be appealed.  Slip op. at 4.  The court further declined to treat Ruiz’s appeal as seeking a writ of mandamus, finding that Ruiz had failed to establish any clear and indisputable right that would have precluded the PTAB from terminating proceedings.  Id.  Moreover, the court was not willing to allow Ruiz sidestep the statutory prohibition on appeals from decisions not to institute IPR by styling its appeal as a petition for mandamus.  Slip Op. at 4-5.

This decision underscores the importance for petitioners to be mindful of the procedural bars in Section 315(a) and 315(b) and steer well clear of them, because the PTAB’s decision to not to institute IPR under these provisions cannot be appealed.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 290 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.