GEA Process: Appealing IPR Termination Decision

Following Cuozzo, I largely wrote-off GEA Process (“GPNA”) v. Steuben as having any chance for certiorari. However, the petitioner’s newly filed reply brief offers an opportunity for revival.

In its decision on an IPR appeal, the Federal Circuit held that it lacked jurisdiction to review claims that the PTAB exceeded the PTO’s statutory authority by “terminating and vacating five instituted and near-final IPR proceedings, without determining patentability vel non as Congress had intended.”  Thus, the question presented is:

Whether the Federal Circuit erred in holding that, even if the Patent Trial and Appeal Board exceeded its statutory authority by terminating an instituted IPR proceeding with a final written decision, the PTAB’s final decision is judicially non-reviewable.

Following the original petition filing, the Supreme Court decided Cuozzo v. Lee and held that the PTO’s decision to institute an inter partes review is not appealable.

GPNA distinguishes its petition from Cuozzo on the grounds that it “is seeking to appeal is a final written decision terminating GPNA’s IPR proceedings without deciding patentability, nine months after granting institution (“Termination Decision”).”

GPNA is not appealing or seeking to change those institution decisions. . . . The Termination Decision was based upon the panel’s legal error in assuming that 35 U.S.C. § 312(a)(2) stated a jurisdictional requirement, the failure of which nullified the validity of the proceeding. . .

[T]his Petition addresses an agency action that is not barred from review by § 314(d) and it presents a legal issue as to which the salutary “presumption of reviewability” should apply. The Federal Circuit erred in summarily refusing jurisdiction, both by appeal and writ of mandamus, and this Petition should be granted.

[GEA Petition; Steuben Brief in OppositionGEA Process Reply]

The uphill battle for certiorari here begins with the fact that the PTAB has now changed its approach now interprets § 312(a)(2) as suggested by GPNA.  Going to the merits, the question is whether termination of an IPR because it never should-have-instituted is effectively a decision regarding institution.

The Supreme Court has scheduled its first conference on the case for September 26, 2016.

7 thoughts on “GEA Process: Appealing IPR Termination Decision

  1. IN R E: AQUA PRODUCTS, INC. (en banc)
    link to cafc.uscourts.gov

    (a) When the patent owner moves to amend its claims under 35 U.S.C. § 316(d), may the PTO require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims as a condition of allowing them? Which burdens are permitted under 35 U.S.C. § 316(e)?

    (b) When the petitioner does not challenge the patentability of a proposed amended claim, or the Board thinks the challenge is inadequate, may the Board sua sponte raise patentability challenges to such a claim? If so, where would the burden of persuasion, or a burden of production, lie?

  2. “The uphill battle for certiorari here begins with the fact that the PTAB has now changed its approach now interprets § 312(a)(2) as suggested by GPNA.”

    So…not too much at stake then, it would seem…

    1. I am curious just how the decision not to have a decision (on the merits) was phrased…

      Stopped because the initiation decision was flawed…? (which would make the termination decision a part of that initiation decision…

  3. The challenge with this petition, as well as the reply, is that it reads like a merits brief. The Court may see it as not presenting a convincing-enough position of why this case is important enough for the Court’s time and why this is the right vehicle. Unfortunately, it reads more like a patent-focused appeal brief. That being said, hopefully the Court will step in here.

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