Intellectual Ventures II LLC v. Jpmorgan Chase & Co.
781 F.3d 1372
| Fed. Cir. | 2015Background
- Intellectual Ventures II (IV) sued JPMC and affiliates for infringement of five patents and later alleged infringement in multiple related suits.
- JPMC moved to stay the Southern District of New York action pending Covered Business Method Review (CBMR) petitions it planned to file; it filed two CBMR petitions (for the '409 and '574 patents) but did not file two others it had referenced.
- The district court denied the stay before the Patent Trial and Appeal Board (PTAB) had acted on the petitions, reasoning that (1) only two of multiple patents were the subject of petitions, (2) litigation would likely resolve faster than CBMR timing, and (3) IV’s right to a speedy trial outweighed speculative workload reductions.
- JPMC sought immediate interlocutory review in the Federal Circuit under 35 U.S.C. § 18(b)(2), which authorizes appeals of district court decisions on stays "relating to" CBMR proceedings.
- The Federal Circuit held it lacked jurisdiction because § 18(b)(2) applies only where a CBMR proceeding has been instituted by the PTAB (i.e., the petition has been granted), not merely when a petition is filed or anticipated.
- Judge Hughes dissented, arguing that the statute and AIA objectives support interlocutory review of stay decisions at any stage of the CBMR process, including petition-stage stays.
Issues
| Issue | Plaintiff's Argument (IV) | Defendant's Argument (JPMC) | Held |
|---|---|---|---|
| Whether the Federal Circuit has jurisdiction under AIA § 18(b)(2) to hear an interlocutory appeal of a district court denial of a stay when CBMR petitions have been filed but the PTAB has not instituted review | IV: § 18(b)(2) permits interlocutory appeals only when a CBMR proceeding has been instituted; a petition alone is not a "proceeding" | JPMC: A CBMR "proceeding" begins when a petition is filed; § 18(b)(2) covers stay rulings related to filed petitions or intentions to file | Held: No jurisdiction — § 18(b)(2) authorizes appeals only after the PTAB institutes a CBMR proceeding (petition grant) |
| Whether "proceeding" in the AIA should be read to include petition-stage activity | IV: Statutory text and post-grant review provisions show "proceeding" begins when the Director institutes review | JPMC: Broader reading better aligns with purpose and PTO practice; petition-stage stays should be reviewable | Held: Textual and statutory-scheme analysis favors narrow meaning: proceeding begins upon institution by the PTAB |
| Whether PTO regulations or some district court practices broaden the term "proceeding" for appellate-jurisdiction purposes | IV: Agency regulations cannot expand federal appellate jurisdiction and are inconsistent with AIA text | JPMC: Points to PTO and some district courts treating petitions as part of proceedings | Held: PTO regulations do not control jurisdiction; inconsistent regulations and agency deference do not change statutory reading |
| Whether policy and AIA purpose (preventing duplicative litigation and ensuring uniform stay decisions) require broader interlocutory review at petition stage | IV: Narrow jurisdiction is consistent with final-judgment rule and Congress’s limited exception; district courts can still stay on equitable grounds | JPMC: Broader review required to effectuate AIA’s goals of efficiency and uniformity | Held: Policy arguments insufficient to overcome statutory text; narrow jurisdiction upheld, dissent disagrees |
Key Cases Cited
- Firestone Tire & Rubber Co. v. Risjord, 449 U.S. 368 (discusses final judgment rule and piecemeal appeals)
- United States v. Nixon, 418 U.S. 683 (finality requirement and policy against interlocutory appeals)
- Digital Equip. Corp. v. Desktop Direct, Inc., 511 U.S. 863 (narrow construction of exceptions to final judgment rule)
- Coopers & Lybrand v. Livesay, 437 U.S. 463 (Congress narrowly confined immediate review of non-final orders)
- VirtualAgility, Inc. v. Salesforce.com, Inc., 759 F.3d 1307 (Fed. Cir. practice on stays pending post-grant review; PTAB had instituted review in that appeal)
- Robinson v. Shell Oil Co., 519 U.S. 337 (textualist first-step statutory interpretation)