IPR Denials Are Now Standard
After the recently appointed USPTO Director John Squires took the helm, IPR denials have been the standard. This of course isn’t appealing to those that want to challenge patents, so several tried an end-run around the defense by heading straight to the District Court to challenge the Patent Office’s discretionary denials. It didn’t work.
IPR Refresher
In case you aren’t familiar with the IPR, it stands for Inter Partes Review. Inter partes is Latin for “between parties”, and the process allows a third party to challenge the validity of an issued U.S. patent. These reviews are done before the PTAB, and the grounds are limited to lack of novelty (§102) or obviousness (§103). They are typically filed by someone accused of patent infringement, or someone at risk of being sued.
The Federal Circuit Backs Up the PTO
Remember when, if you got a “no” from dad, you’d try your luck by asking mom?
Well Mom (the Federal Circuit) reminded everyone that Dad’s (the PTO’s) decisions on whether to institute an IPR are final and non-appealable. Meaning if the PTO says no, there’s almost nothing you can do about it, even if their reasons are inscrutable.
In Re Cambridge and Settled Expectations
The poster child for this new era is In re Cambridge Industries USA Inc. Here, Cambridge had patents that were seven and nine years old. The USPTO declared these patents to have ‘settled expectations’. Cambridge argued that this “settled expectations” idea wasn’t in the statute, wasn’t subject to notice-and-comment rulemaking, and was unfair. The court, however, was unmoved. They weren’t saying the PTO was right or wrong—they just said Cambridge didn’t have a “clear and indisputable right” to a mandamus order (that’s Latin for “we command you to do something”), and thanks to 35 U.S.C. § 314(d), which bars virtually all judicial oversight of institution decisions, the courts basically can’t command the PTO to change its mind.
Bottom line: the USPTO’s “final and non-appealable” shield is real, it’s strong, and it leaves accused infringers staring at a brick wall.
For the evolving history of the IPR, we suggest these articles:
What the USPTO’s 0% IPR Institution Rate Means for Patent Holders