En Banc Federal Circuit To Decide What To Decide In Inter Partes Review Appeals

Welcome, dear readers, to 2017.

While we left 2016 with the potentially explosive news that the Supreme Court may be poised to eliminate the forum shopping that feeds patent troll litigation, we begin the new year with a Federal Circuit decision to review a small problem with the review of decisions by the Patent Office relating to inter partes review, the proceeding under which an accused infringer can seek the invalidation of a patent by the PTO in an adversarial proceeding.

Under the statute, if you are sued for patent infringement, you have one year to file an inter partes review petition in the PTO (dating from when you were served with the complaint). After that, you are out of luck.

Under a different provision of the same law, the decision of the PTO whether to institute an inter partes review proceeding is final and non–appealable. If you want to appeal, you are out of luck.

In September 2015, the Federal Circuit held that this second provision means that the decision of the PTO regarding whether a petition was timely filed under the first provision is final and non–appealable. If the PTO somehow allows an inter partes review to go forward even though the petition was filed too late, you are out of luck.

Yesterday, on January 4, 2017, the Federal Circuit as a whole decided to revisit this question. The en banc court will decide the issue after supplemental briefing and oral argument. The court will then be in the position of deciding whether it has the authority to decide the timeliness question.