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.
The Federal Circuit reminded everyone that 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.
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 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.