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


Docket No. 2014-1767

PROST, LOURIE, LINN
September 30, 2015

Brief Summary: FC panel held “that 35 U.S.C. § 314(d) prohibits this court from reviewing the Board’s determination to initiate IPR proceedings based on its assessment of the time-bar of § 315(b), even if such assessment is reconsidered during the merits phase of proceedings and restated as part of the Board’s final written decision.”

Summary: This opinion relates to an appeal from Apple’s IPR petition (IPR2013-00081) against Achates’ US Pat. Nos. 5,982,889 and 6,173,403. The PTAB determined claims 1-4 of the ‘889 patent and claims 1-12 and 17-19 of the ‘403 patent were invalid. Achates appealed, arguing “the underlying petitions for IPR were time-barred under 35 U.S.C. § 315(b)” (IPR “may not be instituted if the petition requesting the proceeding is filed more than 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. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).”) In June 2011, Achates sued QuickOffice, Inc. for infringement and joined Apple one year later. Apple filed for IPR in December 2012. Achates argued Apple’s relationship with QuickOffice (based on “a blank [unsigned] indemnification agreement”) caused the IPR to be time-barred. The PTAB denied Achates motion, “finding no basis to believe that even if the blank indemnification agreement had been signed, it would show QuickOffice or any other codefendants to be real parties in interest or in privity with Apple as those terms are used in § 315(b).” The FC panel concluded the court lacks jurisdiction under § 314(d) (St. Jude Med., FC 2014; Dominion Dealer, FC 2014 (“‘section § 314(d)’s broad declaration’ precluding appeals over the director’s decision ‘whether to institute’ and IPR”); In re Cuozzo, FC 2015 (PTAB decision not to institute IPR based on “reasonable likelihood that the petition would prevail”); “Versata II”, FC 2015 (decision to institute IPR because patent was a “covered business method”)). However, the opinion explains that “institution and invalidation are two distinct actions”, and that an appeal may be based on the “merits of [a] final written decision” (citing Versata II: “[I]t is the merits of the final written decision that are on appeal; we are not here called upon to review the determination by the [Board] whether to institute a CBM review, and indeed [35 U.S.C. § 315(e)] expressly instructs that we may not.”) It also explained that in Versata II the question went to the Board’s “ultimate authority to invalidate the patents” and such determinations are “limited to the unique circumstances of CBMR”. Thus, the FC panel held “that 35 U.S.C. § 314(d) prohibits this court from reviewing the Board’s determination to initiate IPR proceedings based on its assessment of the time-bar of § 315(b), even if such assessment is reconsidered during the merits phase of proceedings and restated as part of the Board’s final written decision.”

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