Federal Circuit Holds That It Lacks Jurisdiction To Review PTAB's § 315 Time-Bar Determination

The Federal Circuit has again held that it lacks jurisdiction to review certain decisions of the U.S. Patent Trial & Appeal Board in Inter Partes Reviews, continuing the Court's apparent "hands off" approach to reviewing PTAB decisions in IPRs. This time, the Federal Circuit determined that it lacks jurisdiction to review a PTAB Board's determination as to whether to initiate an Inter Partes Review proceeding based on the one year time bar of 35 U.S.C. § 315(b), "even if such assessment is reconsidered during the merits phase of proceedings and restated as part of the Board's final written decision." Achates Reference Publishing, Inc. v. Apple, Inc., No. 2014-1767, at 13 (Fed. Cir. Sept. 30, 2015).

Section 315(b) establishes a one year time bar prohibiting PTAB from instituting an IPR challenging the validity of a U.S. patent "if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent." When Apple filed petitions for Inter Partes Review of two Achates patents, Achates argued that Apple's IPR petitions were time-barred under 35 U.S.C. § 315(b) because, according to Achates, Apple was in privity with one or more defendants who had been served with a complaint alleging infringement of those Achates patents more than a year prior to Apple's petitions. Achates also argued that Apple's IPR petitions were time-barred because those earlier defendants were real parties-in-interest to the petitions.

The Board disagreed and concluded that none of the earlier defendants were real parties-in-interest or privies of Apple, and accordingly, instituted the IPRs. Id. Achates continued to argue that Apple's petitions were time-barred during the IPRs and the Board reaffirmed its earlier decision on this issue in the final written decision. Id. at 4-5. Achates appealed the final written decision, arguing that the Board erred in finding that Apple's petitions were not time-barred. Id. at 5.

On appeal, the Federal Circuit examined whether it had jurisdiction over the PTAB Board's conclusion that Apple's petitions were not time-barred under § 315(b). Achates argued that the Court had jurisdiction under Versata Dev. Grp., Inc. v. SAP America, Inc., 793 F.3d 1306 (Fed. Cir. 2015) ("Versata II"). In Versata II, the Patent Owner had opposed institution of a Covered Business Method Review, arguing that that...