Versata Development Group, Inc. v. Lee
793 F.3d 1352
Fed. Cir.2015Background
- Versata owns U.S. Patent No. 6,553,350 and prevailed at trial against SAP on infringement; the injunction was later vacated as overbroad on appeal.
- SAP petitioned the USPTO in 2012 for a covered business method (CBM) review of the ’350 patent; the PTAB instituted CBM review in January 2013.
- While the PTAB proceeding was pending, Versata sued the USPTO in the Eastern District of Virginia seeking to set aside the PTAB’s institution decision; SAP successfully intervened.
- The district court dismissed Versata’s suit for lack of subject-matter jurisdiction and failure to state a claim, holding the AIA precludes judicial review of PTAB institution decisions.
- Versata appealed to the Federal Circuit (Versata II); the Federal Circuit affirmed, holding § 324(e) of the AIA bars judicial review of the PTAB’s decision to institute post‑grant/CBM review.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether a district court may review the PTAB’s decision to institute CBM/post‑grant review | Versata argued the institution decision is reviewable and that judicial review is essential and available | USPTO/SAP argued the AIA (35 U.S.C. § 324(e)) makes the decision to institute final and nonappealable, precluding district‑court review | Court held § 324(e) bars judicial review of the PTAB’s decision to institute CBM/post‑grant review; affirmed dismissal |
| Whether an adequate alternative remedy exists | Versata contended district review was necessary now | USPTO/SAP pointed to statutory appeals at the final written decision stage to the Federal Circuit | Court noted Congress provided review at the final written decision stage and balanced prompt USPTO proceedings with judicial review; district relief at institution stage is barred |
Key Cases Cited
- VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d 1307 (Fed. Cir. 2014) (addressing limits on district‑court review and stays related to CBM institution decisions)
- Benefit Funding Sys. LLC v. Advance Am. Cash Advance Ctrs. Inc., 767 F.3d 1383 (Fed. Cir. 2014) (same; recognizing statutory limits on review of PTAB institution)
- St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014) (construing inter partes review provision § 314(d) and limits on interlocutory review)
- In re Proctor & Gamble Co., 749 F.3d 1376 (Fed. Cir. 2014) (mandamus relief denied in context of IPR institution review)
- In re Dominion Dealer Solutions, LLC, 749 F.3d 1379 (Fed. Cir. 2014) (mandamus addressing institution decisions under the AIA)