The PTO’s decision whether or not to institute Inter Partes Review (IPR) is not appealable to the Federal Circuit. Here, for example, the Federal Circuit found that it lacked jurisdiction to review the PTO’s decision to institute IPR, even after a final decision.
Background / Facts: The patent on appeal here from Inter Partes Review (IPR) at the PTO is directed to an interface which displays a vehicle’s current speed as well as the speed limit. The PTO granted IPR based on a first combination of prior art references, but subsequently invalidated several claims based on a different combination of prior art references not identified in the petition for IPR for those claims.
Issue(s): Whether 35 U.S.C. § 314(d) prohibits review of the decision to institute IPR even after a final decision.
Holding(s): Yes. “[W]e hold that we lack jurisdiction to review the PTO’s decision to institute IPR. … Section 314(d) provides that the decision is both ‘nonappealable’ and ‘final,’ i.e., not subject to further review. [] A declaration that the decision to institute is ‘final’ cannot reasonably be interpreted as postponing review until after issuance of a final decision on patentability.”