Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in ESIP Series 2, LLC v. Puzhen Life USA, LLC, No. 2019-1659 (May 19, 2020). Patent owner ESIP appealed from the Patent Trial and Appeal Board’s decision finding all challenged claims obvious in view of the prior art. ESIP also appealed the Board’s decision to institute inter partes review (IPR), arguing institution was improper because Puzhen violated the requirements of 35 U.S.C. § 312(a)(2) by failing to identify “all real parties in interest.”
The Federal Circuit affirmed. On the issue of the obviousness determination, the Court rejected the challenge to the Board’s fact finding, concluding that all challenged fact findings were supported by substantial evidence. The Court explained there is no error in the Board’s “decision to credit the opinion of one expert over another, and [the Court] do[es] not reweigh evidence on appeal.” The Court also rejected ESIP’s assertion that the Board committed errors of law, noting ESIP failed to identify any way the alleged errors affected the outcome.
On the issue of ESIP’s challenge to the Board’s institution decision, the Court concluded that the Supreme Court’s 2016 decision in Cuozzo—that 35 U.S.C. § 314(d) makes Board decisions on whether to institute IPRs final and non-appealable—applies. The Court also looked to the recent decision of the Supreme Court in Thryv, Inc v. Click-To-Call Techs., LP, which held that § 314(d) also precludes judicial review of institution decisions addressed to application of the one-year time bar set forth in § 315(b). While Cuozzo specifically related to reviewability of the Board’s determination on the “particularity” requirement of § 312(a)(3) and Click-To-Call specifically related to reviewability of the Board’s determination on the application of the time bar of § 315(b), in both cases the Supreme Court held § 314(d) bars challenges to the Board’s application of institution-related statutes. Applying the precedent of Cuozzo and Click-to-Call, the Federal Circuit held § 314(d) bars ESIP’s challenge on appeal of the Board’s decision to institute the IPR over ESIP’s objection that Puzhen failed to comply with the “real parties in interest” requirement of § 312(a)(2). Such a challenge, the Court explained, represents an ordinary dispute about the application of an institution-related statute and is not subject to review on appeal, even following a final written decision.