Lead Opinion
Opinion concurring in part and dissenting in part filed by Circuit Judge PLAGER.
Husky Injection Molding Systems Ltd. (“Husky”) appeals from the U.S. Patent and Trademark Office Patent Trial and Appeal Board’s (“the Board”) inter partes review decision finding claims 1, 4-16, 18, and 20-22 of U.S. Patent 7,670,536 (“the ’536 patent”) anticipated. Athena Automation Ltd. v. Husky Injection Molding Sys. Ltd., No. 201300290,
BACKGROUND
The ’536 patent discloses a molding machine having a clamp assembly comprising, inter alia, a stationary platen 120, a movable platen 122, tie bars 121, tie bar locks 130 that couple the tie bars to the movable platen, and clamp actuators 128 that supply a clamping force to the tie bars. ’536 patent col. 8 1. 58-col. 9 1. 46. Figure 2a, reproduced below, depicts the clamp assembly.
[[Image here]]
Id. fig.2a. When the two platens, each attached to a mold support structure, 124, 126, are brought together, a mold cavity is created “in which a molded article may be molded ... once the extruder 104 injects, under pressure, the injectable molding material into the mold cavity.” Id. col. 9 11. 6-10; id. col. 911. 20-24.
The claims of the ’536 patent specifically recite a lock and a method for using that lock to couple the tie bars 121 to the movable platen 122.
[[Image here]]
Id. fíg.5b, fig.6b. Once the two lock members engage, the clamp on the stationary platen applies a clamping force, locking the two platens together and assembling the mold. Id., col. 13 11,12-21.
Husky’s former owner and president (“Schad”) is also a co-inventor of the ’536 patent. In 2007, Schad assigned the ’536 patent to Husky. Shortly thereafter, Schad sold Husky to a private equity group, and left to form Athena. In 2012, Athena filed a petition for inter partes review at the Board, challenging the patentability of all 22 claims in the ’536 patent. Athena asserted, inter alia, that various claims of the ’536 patent were anticipated either by U.S. Patent Application 2004/0208950 (“Glaesener”) in combination with its incorporation by reference of U.S. Patent 5,753,153 (“Choi”) (together, “Glaesener/Chói”), or by U.S. Patent 5,417,913 (“Arend”).
Husky filed a preliminary response, arguing only that assignor estoppel barred
In 2014, the Board issued its final written decision. It found that claims 1, 4-16, 18, and 20-22 were anticipated by Arend, Final Written Decision at *23, and that claims 2, 3,17, and 19 were not anticipated by Glaesenet/Choi, id. at *16-17. With respect to the latter, the Board declined to address whether two paragraphs in Glae-sener incorporate Choi by'reference,
Athena requested rehearing of the final decision, and the Board granted the request in part. J.A. 64. In doing so, the Board expressly addressed incorporation by reference, and found that Athena failed to show that Glaesener incorporates any portion of Choi for purposes of anticipation. Specifically, it reasoned that Athena submitted no evidence or explanation supporting what a skilled artisan would understand the “pineapple and toothed-ring mechanism” in Choi to be, J.A. 60, nor were Choi and Glaesener clear as to what was meant to be incorporated, J.A. 62. For that reason only, the Board reaffirmed its finding that Athena failed to prove anticipation of claims 2, 3,17, and 19. J.A. 63-64.
Husky timely appealed from the Board’s decision with respect to claims 1, 4-16, 18, and 20-22; Athena timely cross-appealed from the Board’s decision with respect to claims 2, 3, 17, and 19. We have jurisdiction to review the Board’s final decision under 28 U.S.C. § 1295(a)(4)(A). .
Discussion
I. Husky's Appeal
Husky’s appeal focuses exclusively on whether assignor estoppel may bar a party from filing a petition for inter partes review at the Patent and Trademark Office. Husky contends that Athena is in privity with Schad, the assignor of the ’536 patent, and, as such, is estopped from challenging the claims of the ’536 patent. Accordingly, Husky continues, the Board acted outside of its-statutory authority when it instituted review and found claims 1, 4-16, 18, and 20-22 unpatentable as anticipated. As Husky only argues that Athena is es-topped from seeking inter partes review,
A
We begin with necessary context. In 2011, Congress created the inter partes review process, inter alia, as a means for the Patent and Trademark Office to efficiently review issued patents. Sections 311 through 319 carefully describe the requirements of and mechanism for review. See 35 U.S.C. §§ 311-319. Of particular importance is § 314(d), which provides that “the determination by the Director whether to institute inter partes review under this section shall be final and nonappealable.” Id, § 314(d) (emphasis added). Since § 314(d)’s inception, we have had several opportunities to address whether and to what extent it limits our ability to review the institution decision. E.g., Achates Reference Publ’g, Inc. v. Apple Inc.,
We first held in St. Jude that § 314(d) bars interlocutory review of a decision to deny inter partes review.
Wé then held in Cuozzo that § 314(d) precludes review of the Director’s earlier decision to institute, even after a final written decision. In Cuozzo, the Director instituted an inter partes review of certain claims, relying on ■ several references not cited in the petition with respect to those claims. See
Cuozzo petitioned the Supreme Court to grant certiorari, and the Court did so. Following oral argument, the Court affirmed our decision, concluding that the
With respect to the first, the Court noted that § 314(d) unquestionably provides that the determination whether to institute inter partes review “shall be final and nonappealable.” That mandate operates with particular force in view of Congress’s objective in creating the inter partes review process, “giving the Patent Office significant power to revisit and revise earlier patent grants,” as well as the existence of similar provisions in related patent statutes. Id. at 2139-40 (citing both 35 U.S.C. § 319 and 35 U.S.C. § 312 (2006) (repealed) (highlighting the nonreviewability of the determination to initiate inter partes reexamination) with respect to the latter point).
With respect to the second, the Court noted that “the legal dispute at issue [there was] an ordinary dispute about the application of certain relevant patent statutes concerning the Patent Office’s decision to institute inter partes review,” particularly the “related statutory section, §312,” and that the express language of § 314(d) “must, at the least, forbid an ap^ peal that attacks a ‘determination ... whether to institute’ review by raising this kind of legal question.” Id. at 2139. The Court emphasized that review is foreclosed “where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.” Id. at 2141 (emphasis added).
The Court did, however, leave open the possibility that § 314(d) may nevertheless allow for review of appeals that “implicate constitutional questions, that depend' on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond ‘this section.’ ” Id. The Court further noted that it did not “categorically preclude review” of any final decision where the agency acted outside of its statutory authority, e.g., “canceling a patent claim for ‘indefiniteness under § 112’ in inter partes review.” Id. at 2141-^2; see also 35 U.S.C. § 311(b) (“A petitioner may request to cancel [a claim] only on a ground that could be raised under section 102 or 103.”).
In line with the latter exception, we have similarly determined that we may review a challenge to the institution decision if it relates to the Board’s ultimate authority to invalidate a particular patent. That
Indeed, we first established that principle in Versata,. in. an analogous covered business method (“CBM”) review context. See
We then elaborated on that principle in Achates, holding that procedural limits placed on when certain parties must file for review do not relate to the Board’s ultimate authority to invalidate a patent. See Achates,
In particular, we acknowledged that “compliance with the time-bar does not itself give the Board the power to invalidate a patent. Instead, the time-bar [(§ 315(b))] sets out the procedure for seeking IPR,” id. at 658, in contradistinction to the express authorization in CBM review for the Board to institute review of, and perhaps invalidate, a CBM patent, cf Versata,
The above-discussed cases establish a two-part inquiry for determining whether we may review a particular chal-lénge to the decision whether to institute. First, we must determine whether the challenge at issue is “closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review,” or if it instead “implicate^] constitutional' questions,” “depend[s] on other less closely related statutes,” or “presents] other questions of interpretation that reach, in terms of scope and impact,” “well beyond ‘this section.’” Cuozzo II,
B
It is with that context in mind .that we now turn to the instant case. As in the cases noted above, Husky’s appeal challenges the institution decision, specifically the Board’s determination during the institution phase that assignor estoppel cannot bar an assignor or his or her privies from petitioning for inter partes review. According to Husky, that determination involves “an interpretation issue that reaches, in terms of scope and impact, well beyond § 314,” see Appellant’s Suppl. Br. 1, and, moreover, it necessarily implicates the Board’s invalidation authority with respect to the ’536 patent, see, e.g., Appellant’s Reply Br. 36-43. For those reasons, Husky asserts that we have jurisdiction to review the assignor estoppel determination.
We are mindful of the otherwise powerful presumption favoring judicial review of agency determinations, but in applying the foregoing framework, we conclude that we lack the authority to review the Board’s determination in its institution decision that assignor estoppel does not apply at the Patent and Trademark Office.
First, we conclude that the question whether assignor estoppel applies in full force at the Patent and Trademark Office does not fall into any of the three categories the Supreme Court specifically mentioned as reviewable. Nothing about the question implicates a constitutional concern such as a due process violation, and no party contends as much. Cuozzo II,
Nor does it “depend on other less closely related statutes.” Id. As an initial matter, the doctrine of assignor estoppel does not derive from statute. Rather, it is an equitable doctrine that arose in the patent infringement context to prohibit an assign- or or his or her privies from stating the patent rights earlier assigned are of no value. Diamond Sci Co. v. Ambico, Inc.,
Nevertheless,' a determination whether assignor estoppel applies at the Patent and Trademark Office in the inter partes review contéxt necessarily requires an interpretation of 35 U.S.C. § 311(a) (“[A] person who is not the owner of a patent may file....”). See Institution Decision at *7 (“Consequently, under the statute, an assignor of a patent, who is no longer an owner of the patent at the time of filing, may file a petition requesting inter partes review. This statute presents a clear expression of Congress’s broad grant of the ability to challenge the patentability'of patents through inter partes review.” (emphasis added)). We must therefore assess whether § 311 constitutes a “closely related” or an “other less closely related” statute. See Cuozzo II,
Even though the Supreme Court did hot set forth any specific framework for determining if a statute is “closely related,” the statutes “closely related” to the decision whether to institute are necessarily, and at least, those that define the metes and bounds of the inter, partes review process. And an interpretation of § 311 and its prescription of “a person who is not the owner of a patent, may file” to either, include or foreclose assignor estoppel is very, “closely related” to any decision to initiate inter partes review. ■ ■
Husky focuses on the third exception set forth by the Supreme Court, arguing that the question'of assignor estoppel is ultimately an “interpretation of an issue that reaches, in terms of scope and impact, well beyond § 314.” Appellant’s- Suppl. Br. 1. We do not agree. Section 314 describes the threshold determination the Patent and Trademark Office must make before it can institute a review; namely, the Director must first determine “that the information presented in the petition ... shows that there is a reasonable likelihood” the petitioner would prevail on the patentability grounds raised. 35 U.S.C. § 314(a). The scope of the section thus pertains to arguments concerning patentability and the necessary strength of those arguments before the Director is authorized to initiate review. The question of assignor estoppel implicates those very same concerns; if assignor estoppel applies, an assignor or his or her privies may not challenge the patentability of the patent earlier assigned, and any petition filed by an assignor or his or her privies falls far short of the “reasonable likelihood” standard guarding against improper institution. See Mentor Graphics Corp. v. Quickturn Design Sys., Inc.,
Although we conclude that the assignor estoppel question is not entitled to review under the three exceptions in Cuozzo II, we must nevertheless further determine if, despite the question’s close ties to the decision to institute, the question relates to the Board’s ultimate invalidation authority. We conclude that it does not.
As in this case,' both Versata and Ac-hates involve-statutes “closely related” to the decision to initiate the respective reviews, as we have defined such statutes here today. Nevertheless, in Versata, we held that we could review a determination
As we have stated, assignor estoppel operates to prevent “one who has assigned the rights to a patent (or [a] patent application) from later contending that what was assigned” lacks value. Diamond Sci.,
In that way, assignor estoppel differs from the certain statutory limits placed on the Board’s authority in a CBM review. In Versata,■ the determination in question turned on the type of patent involved, for the nature of the patent alone made it subject to “a special [Board] power to invalidate.”
For the reasons articulated above, we conclude that we lack jurisdiction to review the Board’s determination on whether assignor estoppel precludes it from instituting inter partes review. We therefore dismiss Husky’s appeal, and express no opinion on the merits of the Board’s conclusion that assignor estoppel may not bar an assignor or his or her privies from petitioning for inter partes review.
II. Athena’s Cross-Appeal
The question before us in the cross-appeal relates to incorporation by reference, and ultimately to anticipation.
We review the Board’s legal conclusions de novo, In re Elsner,
Anticipation is a fact question that we review for substantial evidence. In re Gleave,
A host document incorporates material by reference if it “identif[ies] with detailed particularity what specific material it incorporates and clearly indicate[s] where that material is found in the various documents.” Id. Whether and to what extent material is incorporated by reference is a question of law we review de novo. See Harari v. Lee,
Athena’s cross-appeal contests the Board’s determination that the prior art Glaesener does not incorporate the prior art Choi by reference, and thereby the Board’s finding that claims 2, 3,17, and 19 are not unpatentable as anticipated. Two specific paragraphs in Glaesener are at issue. The first reads: “The tie-bar nuts can be secured ... by any appropriate mechanism, such as the pineapple and toothed-ring mechanism described in [Choi].” Glaesener ¶ 0035. The second reads: “All cross-referenced patents and application^] referred to in this specification are hereby incorporated by reference,” Id. ¶ 0049. The Board determined that neither paragraph identifies with sufficient particularity what material from Choi Glaesener meant to incorporate.
On appeal, Athena contends that it provided evidence establishing that a skilled artisan would 'understand with sufficient particularity what the “pineapple and toothed-ring mechanism” language ’ referred to in Choi. Alternatively, Athena contends that the second statement effects a broad incorporation that cannot be negated by the use of a more precise incorporation statement elsewhere.
We agree; Glaesener identifies with sufficient particularity what it incorporates from Choi. As an initial matter, the fact that Choi does not recite either of the words “pineapple” or “toothed-ring” throughout its disclosure is ultimately of no moment. The incorporation standard relies only on the reasonably skilled artisan and his or her ability to deduce from language, however imprecise, what a host document aims to incorporate. See Harari,
Even so, Choi explicitly identifies toothed components when discussing its securing/clamping assemblies, i.e,, its locking mechanism. And, importantly, Figure 3A discloses the only locking mechanism in Choi.
Referring to Figs. 3A and 3B, in order for the securing/clamping assembly 22a of platen 14 to function with the tie bar 2a, tie bar 20a includes an elongated end section having a plurality of spaced protrusions in the form of teeth 38a separated by longitudinally extending inner*1249 slots 40a as shown in Fig. 3B. Accordingly, at the end of tie bar 20a is a toothed outer surface, as shown in Fig. 3A. The toothed outer surface of tie bar 20a is in the form of longitudinal outer strips of teeth 39a extending in the axial direction of the tie bar, wherein the teeth 38a are preferably aligned in a radial direction on the tie bar and separated by a space in the axial direction ....
Outer strips of teeth 39a and slots 40a of tie bar 20a are adapted to engage and align, respectively, with inner teeth and grooves of securing/clamping assembly 22a.... Securing/clamping assembly 22a is comprised of a member in the form of a piston 44a.... Piston 44a includes an outer surface 46a and an inner surface with axially extending teeth 48a separated by spaces in the axial direction, which are adapted to engage teeth 38a of the strips of teeth 39a of tie bars 20a. A slight axial clearance is provided between the teeth 38a of tie bars 20a and the inner teeth 48a of toothed piston 44a to allow for relative movement....
Choi, col. 5 1. 40-col. 6 1. 5 (emphases added). A reasonably skilled artisan would thus appreciate Glaesener’s reference of “pineapple and toothed-ring” to describe, with sufficient particularity, the above-referenced disclosure in Choi. To find otherwise would be to undervalue the knowledge of a skilled artisan. Indeed, Athena identified Figure 3a as the “pineapple and toothed-ring mechanism” Glaesener referred to both in its petition for inter partes review and during its trial at the Board. See J.A. 113-14; J.A. 441-42. Nothing more was required.
Glaesener’s two paragraphs, ¶ 0035 and ¶ 0049, accordingly work in concert to incorporate at least some portions of Choi. It is therefore of no consequence whether Glaesener’s broader statement in fact incorporates the rest of Choi, ie., in its entirety. Cf. Harari,
Conclusion
We have considered the remaining arguments in both appeals, but find them unpersuasive. For the foregoing reasons, we dismiss Husky’s appeal for lack of jurisdiction; we vacate the Board’s decision on incorporation by reference and its finding of no anticipation with respect to claims 2, 3, 17, and 19; and we remand for further consideration consistent with this opinion.
DISMISSED IN PART, VACATED AND REMANDED IN PART
Costs
Costs to Athena.
Notes
. Claim 1 represents the product claims, '536 patent col. 16 11. T 2-27, and claim 18 represents the method claims, id. col. 18 11. 6-17. Both are reproduced below.
1. A lock of a molding system having a rod and a platen, the lock comprising:
a lock member associated with the rod that is movable between a clamped position and a released position by a clamp assembly; and
a complementary lock member associated with the platen; the lock member and the complementary lock member cooperatively operable to move between a lockable condition and an unlockable condition; wherein
the complementary lock member is en-gagable with the lock member within a relatively lower flex zone of the platen; the relatively lower flex zone of the platen being a
portion of the platen adjacent to the rod and having a flex that is lower relative to a relatively higher flex zone of the platen also adjacent to the rod.
18. A method of actuating a lock of a molding system having a rod- that is movable between a clamped position and a re
engaging a lock member associated with the rod with a complementary lock member associated with the platen at a position located proximate to a relatively lower flex zone of the platen;
the relatively lower flex zone of the platen being a
portion of the platen adjacent to the rod and having a flex that is lower relative to a relatively higher flex zone of the platen also adjacent to the rod.
. The first relevant paragraph in Glaesener recites: "The tie-bar nuts can be secured to the rear wall 16 by any appropriate mechanism, such as the pineapple and toothed-ring mechanism described in [Choi].” Glaesener ¶ 0035 (emphasis added). The second paragraph recites: "All cross-referenced patents and application[s] referred to in this specification are hereby incorporated by reference.” Id. ¶ 0049,
. The Supreme Court issued its decision in Cuozzo II after briefing and oral argument concluded in this case. We therefore requested simultaneous, supplemental briefing from the parties and the Patent and Trademark Office relating to the impact of the Supreme Court’s decision on this case. See Husky Injection Molding Sys. Ltd. v. Athena Automation Ltd., Nos. 2015-1726, -1727, ECF No. 55 (Fed. Cir. July 18, 2016). Those briefs were submitted on July 28, 2016. Id. ECF Nos. 58, 61, 62.
. 35 U.S.C. § 315(b) provides: “An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner ... is served with a complaint alleging infringement of the patent.”
Concurrence Opinion
concurring in part and dissenting in part.
I concur in the majority’s judgment regarding vacating and remanding the cross-appeal. I dissent from the judgment that we lack jurisdiction to review the determination by the Patent Trial and, Appeal Board (“Board”) regarding whether assignor estoppel precludes it from instituting inter partes review in this case. I believe the majority’s reasoning is mistaken, and I respectfully dissent from it and the conclusion to which it leads. Regrettably, the majority’s view may' contribute to the already-existing confusion regarding which matters this court can review on appeal from a final decision by the Board.
Athena, pursuant to the statutory provisions of the America Invents Act (“ALA”), filed its petition requesting inter partes review of the ’586 patent owned by Husky. Husky, in its preliminary response, stated its opposition to the petition. It argued that Athena was barred from filing its petition by the doctrine of assignor estop-pel. The Board rejected Husky’s argument; it took the position that § 311(a) of the ALA determined who could file a petition, and that assignor , estoppel did not provide an exception to § 311(a).
The Board explained that § 311(a) provided simply that “a person who is not the patent owner” could file a petition; since Athena was not the owner, it was such a person. The Board interpreted the provision to mean just what it said and' not to have an implicit exception that would prevent a petitioner, who is subject to assign- or estoppel, from filing. Thus the Board applied essentially a ‘plain meaning
In its appeal to this court, Husky stated that the single issue in its appeal is: “Did the Board legally err by determining that, pursuant to 35 U.S.C. § 311, the doctrine of assignor estoppel does not apply to the inter partes review concerning the ’536 patent_” Appellant’s Br. 1. Much of the briefing in this case focused on the application of assignor estoppel at the decision to institute stage, though some seemed to address more broadly the issue of assignor estoppel’s application to Board proceedings generally. Be that as it may, the only issue properly raised by the record on appeal is the one initiated by the Board and identified by Husky: at the time an initial petition is filed, does § 311(a) incorporate an unstated exception regarding who can file an initial petition, an exception based on assignor estoppel?
Before we can address the correctness of the Board’s resolution of that issue, we must first decide whether as a matter of law we can review the Board’s determination, a determination that was decisive regarding whether the Board could institute inter partes review of the ’536 patent. A statute and a Supreme Court decision govern the answer:. Congress’s mandate in § 314(d) that “[t]he determination ... whether to institute an inter partes review under this section shall be final and nonap-pealable,” and the recent opinion of the Supreme Court in Cuozzo
It is clear from the prior opinions of this court, unquestioned by the Supreme Court, that the statute bars immediate review of a Board decision to institute an inter partes review, whether by interlocutory appeal,
One part of that question is no longer in dispute—the fact that a particular issue is determined initially by the Board at the decision to institute stage does not affect the reviewability of the issue at the final written decision stage, so long as the issue remains relevant to the final merits under review. See, e.g., Versata Dev. Grp., Inc. v. SAP Am., Inc.,
With regard to the larger question—on appeal to this court of a final written decision, what aspects, if any, of the initial decision to institute remain subject to review—one view is that no aspect of the decision to institute is reviewable. That seems to be what the statute literally says, thus making the decision to institute entirely an administrative determination, however it is made. That is now a familiar argument, sometimes reflected in ease outcomes phrased in various ways based on assorted distinctions in the cases.
A different view, one that takes into account the long tradition of judicial review of administrative decisions as well as the mandate of the APA, suggests that the bar to judicial review under § 314(d) should be understood as limited to interlocutory appeals; what Congress wanted to avoid was piecemeal appellate review. Once a final written decision is rendered, the entire case on appeal is properly before the court, including issues surrounding the Board’s initial decision to institute review. In Cuozzo, that was essentially the position of Justice Alito, with whom Justice Sotomayor joined. See
The Cuozzo majority did not go as far as Justices' Alito and Sotomayor would; the Court determined that § 314(d) was not limited to ' barring interlocutory appeals. Id. at 2140. However, by also rejecting the ‘no review of the decision to institute’ view, the Court took an intermediate position that fundamentally altered' the playing field. The Court readily recognized that several factors pointed in favor of precluding any review of the Patent Office’s institution decisions. Id. at 2139-41. Nevertheless, said the Court, “in light of § 314(d)’s own text and the presumption favoring review,” there is one category of cases when the bar of § 314(d) applies, and at least three others when it may not.
The one category in which the bar applies is when “the' grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.” Id. at 2141. The Court then stated “that we need not, and do not, decide the precise effect of § 314(d) on appeals that [1] implicate constitutional questions, that [2] depend on other less closely related statutes, or that [3] present other questions of interpreta
• Thus the Court tells us that, despite the express language of § 314(d), this court’s review on appeal of a final written decision is not limited to' the substantive merits of the case under' §§ 102 and 103, but may include aspects of the Board’s decision to institute. For us, then, the issue in this case is where does assignor estoppel fit in the Court’s matrix of what now can be reviewed?
Assignor estoppel is an equitable doctrine that is recognized in the common law.
For one, the doctrine of assignor estop-pel is in the nature of a common law doctrine, and not itself based on statute. We should be reluctant to allow immunizing judicial review simply because the Board may attribute its decision to an interpretation of a ‘related’ statute. That could open the door to possible manipulation by parties in presenting and arguing cases before the Board and this court.
More importantly, in order to honor the Supreme Court’s direction to this court to exercise judicious review over determinations of the Board, including when called for by extending that review to the Board’s decisions to institute, we must take a close look at what is actually involved. Even if the Board is presumed to have succeeded in tying the question of assignor estoppel to interpretation of a ‘related statute,’ in this case § 311(a), by the way it decided the matter, it is not so clear that this is “closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.” Id. at 2141. The decision to institute inter partes review is governed primarily by the specifics of § 314(a)-(c). It would not be beyond reason to consider §311 to be instead a “less closely related statute.” (The terms of the second category in Cuozzo).
And beyond that, the question of whether assignor estoppel applies to the decision to institute made by the Board in this case could be considered to be one that “presents] other questions of ■ interpretation
The Supreme Court’s pass of the “precise effect of § 314(d) on appeals that implicate” those categories means that this court must undertake that determination in future cases. Applying either of those Cuozzo categories to cases before this court, including issues decided in past cases, reveals that there is a range of reviewable issues that this court is obligated to consider. Examples ■ may include, among others, filing deadlines and joinder and estoppel issues.
I offer no opinion as to whether the Board correctly determined that assignor estoppel does or does not apply to bar the petition in this'case; that issue is yet to be addressed. In my view it is necessary that we decide that issue as part of a proper judicial review of the case before us on final written decision. Whether under the second or third of Cuozzo’s suggested categories for review, or because it is not within Cuozzo’s basic standard for applying the bar of § 314(d) in the first, instance, the question of whether the Board properly ruled on the application of assign- or estoppel to this case is clearly subject to this court’s judicial power of review.
Accordingly, I find the majority’s analysis of this case, its unnecessary commentary approving prior cases that may no longer be good law in light of Cuozzo, and its discussion of why the question of the application of assignor estoppel to this case does not relate to “the Board’s ultimate invalidation authority,” unhelpful. From the majority’s refusal to undertake the required review of the Board’s decision, the issue properly raised on appeal, I respectfully dissent.
. Cuozzo Speed Techs., LLC v. Lee, — U.S. -,
, We have considered and rejected interlocutory appeal of a decision not to institute. See St. Lude Med., Cardiology Div., Inc. v. Volcano Corp.,
. In re Procter & Gamble Co.,
. See HP Inc. v. MPHJ Tech. Inv., LLC,
. §319.
. The Court went further to explain that it did not preclude review of a final decision when a petition raised a due process problem with the entire proceeding, nor did the Court intend to enable an agency to act outside its statutory limits. Id, at 2141-42. The Court observed that such "shenanigans” may be re- - viewable under § 319 and the APA; similar to its treatment of the three reviewability categories, the Court did not elaborate on what constitutes ‘shenanigans.’
. The first category, constitutional questions, is not before us as no constitutional issues have been raised.
. "Assignor estoppel is an equitable doctrine that prevents one who has assigned the rights to a patent (or patent application) from later contending that what was assigned is a nullity.” Diamond Sci. Co. v. Ambico, Inc.,
. See, e.g., Bowen v. Mich. Acad. of Family Physicians,
. Id. at 2142 (citing 5 U.S.C. §§ 706(2)(A)-(D)).
. Accord Judge Reyna’s concurring opinion in Wi-Fi One, LLC v. Broadcom Corp., No. 15-1944,