The PTO’s decision to institute an inter partes review is generally non-appealable, at least “where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.” The broadest reasonable interpretation is also an acceptable standard for claim interpretation during inter partes review.
Background / Facts: The patent on appeal here from inter partes review proceedings at the PTO had the inter partes review instituted for independent claims not specifically identified in the petition and was rejected under the broadest reasonable interpretation standard. A first, so-called “no appeal” provision of 35 U.S.C. § 314(d) states that “[t]he determination by the Director [of the PTO] whether to institute an inter partes review under this section shall be final and non-appealable.” A second provision of 35 U.S.C. § 316(a)(4) grants the PTO the authority to issue “regulations … establishing and governing inter partes review under this chapter.”
Issue(s): Whether the first provision bars a court from considering whether the PTO wrongly “determin[ed] … to institute an inter partes review,” when it did so on grounds not specifically mentioned in a third party’s review request, and whether the second provision authorizes the PTO to issue a regulation stating that the agency, in inter partes review, “shall [construe a patent claim according to] its broadest reasonable construction in light of the specification of the patent in which it appears.”
Holding(s): Yes. “We conclude that the first provision, though it may not bar consideration of a constitutional question, for example, does bar judicial review of the kind of mine-run claim at issue here, involving the Patent Office’s decision to institute inter partes review. We also conclude that the second provision authorizes the Patent Office to issue the regulation before us.”