The America Invents Act (“AIA”) act granted final authority whether to institute an inter partes review (“IPR”) to the Director of the United States Patent Office (“the PTO”). Specifically, 35 U.S.C. §314(d) states that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” On its face, the statute appears clear. However, somewhat conflicting with the AIA, the Administrative Procedures Act (“APA”) grants federal courts the authority to review agency action, unless a statute specifically precludes agency review. Section 5 U.S.C. §702 states that “[a] person suffering legal wrong because of agency action, or adversely affected or aggrieved by agency action within the meaning of a relevant statute, is entitled to judicial review thereof.”
Two recent decisions of the Patent Trial and Appeal Board (PTAB) addressed whether a non-party to an Inter Partes Review should be considered a real party-in-interest. Any real party-in-interest must be disclosed by the Petitioner in the Petition and by the Patent Owner within 21 days of service of the petition. See 37 C.F.R. § 42.8(b)(1). Identification of a real party-in-interest by the Petitioner is necessary because “[a]n 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, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” See 35 U.S.C. §§ 315(b).
In three recent inter partes reviews (IPRs), the Patent Trial and Appeal Board (PTAB) construed means-plus-function claim terms under 35 U.S.C. § 112, sixth paragraph. These decisions show that an IPR Petitioner must offer a proposed claim construction for any means-plus-function claim terms, pointing out the corresponding structure with specificity in the disclosure, and direct the PTAB to prior art that has the same structure as that of the proposed claim construction. Otherwise, the Petitioner risks the PTAB denying institution of the petition.
Schrader-Bridgeport International, Inc. et al. v. Continental Automotive Systems US, Inc., IPR2013-00014 (Patent Tr. & App. Bd. 2014)
In a recent inter partes review (IPR) decision, Schrader-Bridgeport International, Inc. et al. v. Continental Automotive Systems US, Inc. (IPR2013-00014, Paper No. 32, entered March 12, 2014), the Patent Trial and Appeal Board held claims 1-5 and 7-11 of U.S. Patent No. 6,998,973 (the “‘973 patent”) unpatentable as being obvious under 35 U.S.C. § 103. Id. at 2 and 4. With this decision, the PTAB has shown that it is open to combining prior art references in a similar manner to ex parte prosecution.