Achates Reference Publishing, Inc. v. Apple Inc.
803 F.3d 652
| Fed. Cir. | 2015Background
- Achates sued several parties for patent infringement in 2011; Apple was added as a defendant in 2012.
- Apple filed IPR petitions against Achates’ two patents in December 2012; Achates argued the petitions were time-barred under 35 U.S.C. § 315(b) because of Apple’s relationship with earlier-named codefendants.
- Achates sought discovery to prove Apple was in privity or a real party in interest with the codefendants; the PTAB denied the discovery request and found no privity or real-party-in-interest relationship.
- The PTAB instituted the IPRs and, after merits proceedings, issued final written decisions invalidating the challenged claims and reaffirming that the petitions were not time-barred.
- Achates appealed the PTAB’s denials (including denial of discovery) and the § 315(b) timeliness determinations, but did not challenge the substantive invalidity rulings.
- The Federal Circuit held it lacked jurisdiction to review the PTAB’s institution determinations under 35 U.S.C. § 314(d) and dismissed the appeals; discovery rulings dependent on institution were likewise unreviewable.
Issues
| Issue | Achates' Argument | Apple/PTAB Argument | Held |
|---|---|---|---|
| Whether PTAB’s determination that Apple’s IPR petitions were not time-barred under § 315(b) is reviewable after final written decision | The timeliness determination is part of the Board’s final decision and affects the Board’s authority to invalidate the patent, so it is reviewable | The timeliness determination concerns institution and is final and nonappealable under § 314(d) | Dismissed: § 314(d) bars review of institution determinations including § 315(b) timeliness even after final decision |
| Whether denial of Achates’ discovery motion related to § 315(b) is reviewable | Discovery denial prevented proof of privity/real-party-in-interest; therefore appellate review needed | Discovery denial is tied to the nonappealable institution decision and thus unreviewable | Dismissed: discovery denial not reviewable because it concerns institution |
| Whether § 314(d)’s limitation is read narrowly so that only some institution issues are unreviewable | Argues phrase “under this section” narrows the bar and permits review of § 315(b) issues | Precedent interprets § 314(d) to bar review of institution decisions broadly | Held: Court follows precedent; § 314(d) bars review of institution determinations generally |
| Whether an "ultra vires" exception permits review | Suggests agency exceeded statutory authority so exception should apply | Agency action does not amount to egregious or clear statutory mandate violation | Held: No ultra vires showing; narrow exception not met, so no review |
Key Cases Cited
- St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014) (institution decisions to grant or deny IPR are final and nonappealable under § 314(d))
- In re Procter & Gamble Co., 749 F.3d 1376 (Fed. Cir. 2014) (mandamus unavailable to review Director’s institution decision)
- In re Dominion Dealer Solutions, LLC, 749 F.3d 1379 (Fed. Cir. 2014) (interlocutory relief precluded for institution decisions)
- Cuozzo Speed Technologies, LLC v. Lee, 793 F.3d 1268 (Fed. Cir. 2015) (§ 314(d) bars review of institution decisions even after final written decision)
- Versata Development Group, Inc. v. SAP America, Inc., 793 F.3d 1306 (Fed. Cir. 2015) (limited exception: reviewable CBM classification because it defines Board’s ultimate authority)
- GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309 (Fed. Cir. 2015) ( § 324(e) bars review of CBM institution decisions; overlapping issues at merits stage remain institution-based)