Achates Reference Publishing, Inc., v. Apple Inc.

Written By: John Kirkpatrick

Appellant Achates argues that the Patent Trial and Appeal Board erred when the Board instituted an inter partes review (IPR) of Achates’ patents because Appellee Apple’s petitions for the review were time-barred under 35 U.S.C. § 315(b).  The Federal Circuit (Prost, Lourie, and LINN) concludes that it lacks jurisdiction to hear Achates’ appeal because “the Board’s determinations to institute IPRs are final and non-appealable under 35 U.S.C. § 314(d).”


Achates sued QuickOffice for infringement.  One year later, Achates joined Apple in the suit.  Apple petitioned for IPR in the USPTO.  Achates contended that Apple had a relationship with QuickOffice that caused Apple’s petitions to be time-barred under 315(b).  315(b) denies IPR if the petition is filed one 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.”  Achates also moved for discovery to prove Apple’s relationship with QuickOffice.  The Board found that QuickOffice and Apple were not real parties in interest or privies, and denied Achates’ motion for discovery, and invalidated Achates’ patents.

35 U.S.C. 141(c) states “A party to an [IPR] who is dissatisfied with a final written decision of the [Board] … may appeal the Board’s decision only to the [Federal Circuit].”  As the decision not to institute an IPR is not “a final written decision,” the Federal Circuit has held that review of non-institution decision is not within the Court’s statutory grant of authority.  See St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014).  Similarly, mandamus is unavailable to take an interlocutory appeal and the Administrative Procedure Act (see In re Dominion Dealer Solutions, LLC, 749 F.3d 1379, 1381 (Fed. Cir. 2014) and In re Procter & Gamble Co., 749 F.3d 1376, 1378 (Fed. Cir. 2014).  In addition, the decision is not subject to review after a final written decision.  See In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015).   Only in Versata Dev. Grp., Inc. v. SAP America, Inc., 793 F.3d 1306 (Fed. Cir. 2015), after a final written decision, has the court examined the USPTO’s institution of a review when “at the initiation stage the same issue was necessarily implicated in the final merits determination.”  Specifically, because Versata involved a covered business methods review, the patent under review must have been a covered business method in order for the Board to have instituted a review to invalidate.  

Unlike Versata, “the 315(b) time bar does not impact the Board’s authority to invalidate a patent claim - it only bars particular petitioners from challenging the claim.”  For example, the “Board may still invalidate a claim challenged in a time-barred petition via a properly-filed petition from another petitioner.”   In other words, a “time-barred party may nonetheless participate in an [IPR] if another party files a proper petition.  The time bar is not the “’the defining characteristic’ of the Board’s ’authority to invalidate’ a patent.”   Rather, “the time-bar sets out the procedure for seeking IPR.”  Thus, 35 U.S.C. § 314(d) prohibits the Court from reviewing the Board’s decision to institute an IPR.  The Court further notes, that although review is possible when “the egregious error melds the agency’s decision into justiciability,” “the Board’s decision does not violate a clear statutory mandate.”  Therefore, the Court “cannot review the Board’s determination that Apple’s petitions were not time-barred,” and the denial of Achates’ motions for discovery.
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