Discontent At Fed. Circ. Grows Post Cuozzo

The America Invents Act established inter partes review proceedings within the U.S. Patent and Trademark Office for certain challenges to the validity of issued patents.  More than 5,000 IPR petitions have been filed to date, and more often than not the PTO institutes review of the challenged claims. In over 80 percent of IPRs that have reached a final decision, the PTO has invalidated some or all of the instituted claims.  IPR proceedings have impacted patents across technologies, including pharmaceutical and biotech patents.

One issue presented by this increasingly popular avenue for challenging patent claims is the availability of judicial review. In appeals from final decisions, the Federal Circuit will review the PTO’s final substantive findings of invalidity, but has largely declined to review claims that the PTO exceeded its statutory authority when it first instituted the IPR.  In Cuozzo Speed Technologies LLC v. Lee, 136 S. Ct. 2131 (June 20, 2016), a Supreme Court majority agreed with the Federal Circuit that at least some aspects of the PTO’s decision to institute an IPR are not subject to judicial review — even after the PTO renders its final decision. In the six months since Cuozzo, the Federal Circuit has largely continued to deny review.  However, with growing discontent at the Federal Circuit with the current course and concern that it is contrary to Cuozzo, the Federal Circuit appears poised to revisit this issue en banc.