When the Congress wrote “Nonappealable” . . .

by Dennis Crouch

In Power Integrations, Inc. v. Semiconductor Components Industries, LLC, 926 F.3d 1306 (Fed. Cir. 2019), the Federal Circuit held that the one-year 315(b) time-bar for filing an IPR petition can be impacted by post-petition activity. In the case, the petitioner (Semiconductor Components) merged with Fairchild after filing the petition but before the institution decision.  Fairchild had been previously sued by the patentee more than 1-year prior and so was barred from filing its on IPR petition.  In its decision, the Federal Circuit held that that privy relationships developed post-petition but pre-institution should be considered for the 1-year time bar purposes.

Pre-Institution Merger Foils Inter Partes Review Challenge

Following the Federal Circuit’s June 2019 decision, Semiconductor petitioned for rehearing en banc — arguing (1) a petition’s timeliness should be judged as of the petition’s filing date (as supported by statutory analysis and legislative history); and (2) this sort of issue should not have been appealable under Section 314(d) (“The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”).  [OnSemiconductorEnBancPetition].

The Federal Circuit has now denied the petition for rehearing — setting-up the case for Supreme Court review. Michael Hawes (Baker Botts) handled the original appeal for petitioner; and Kathleen Sullivan (Quinn Emanuel) was added to the team for this rehearing. Frank Scherkenbach (Fish & Richardson) represents Power Integrations.

Once filed, this will be one of several cases pending before the Supreme Court on the 1-year time bar of 315(b). In Click-to-Call, the Supreme Court has already agreed to hear the question of “Whether 35 U.S.C. § 314(d) permits appeal of the PTAB’s decision to institute an inter partes review upon finding that § 315(b)’s time bar did not apply.” Dex Media, Inc. v. Click-To-Call Techs., LP, 139 S. Ct. 2742 (2019)(petition “granted limited to Question 1 presented by the petition”).

11 thoughts on “When the Congress wrote “Nonappealable” . . .

  1. 5

    Re: “..this will be one of several cases pending before the Supreme Court on the 1-year time bar of 315(b). In Click-to-Call,..”

    But are any of these cases arguing [with factual support] that the Fed. Cir. has allowed the PTAB to interpret 315(b) in an “arbitrary or unreasonable” manner or violate the APA?

  2. 3

    Totally off-topic, but I do not know a better place to mention this, so I will just put it here:

    I am reading the file history for a case that I recently took over. The examiner inserted a notice in a recent office action that “analysis engine” is being interpreted under §112(f).

    I mention this merely because Random & Ben routinely tell me how toothless is the application of §112(f). Maybe that is true in some other art units, but at least in 1631 they are evidently paying careful attention to Williamson.

    1. 3.1

      Best practices has been for a long time not to use terms like “analysis engine.” It does convey structure to POSIT and to Anyones, but opens the door to 112(f). Not great either for litigation.

      1. 3.1.1

        Given Greg “I use my real name” DeLassus’s ‘whipped out’ credentials, I certainly hope that for his client’s sake (and his malpractice insurance carrier’s sake) that he has co-counsel on this prosecution that he has inherited, as the topic is clearly above his capability (and no, Greg, the Singularity has not happened, so all this ‘AI talk’ is not about sentient machines).

        And Night Writer, since (in Greg’s view) “no one cares” and he still walks away from that ‘battle of credentials’ fully believing that his viewpoint carries the day, your views will be dismissed the exact moment that they do not match that so-well-credentialed-as-his-real-name-is-enough mastery that Greg brings to the table.

        What could possibly go wrong for Greg’s clients?

      2. 3.1.2

        Best practices has been for a long time not to use terms like “analysis engine.”

        Agreed. As it happens, the term has been replaced already in a subsequent amendment. I merely remark on it because it constitutes a tangible example of the PTO rigorously applying the law of §112(f), which Random & Ben complain of being routinely ignored by the PTO.


          “Best Practices” does NOT support the notion that the Office is rigorously applying anything (much less, applying that thing correctly).

          You “celebrate” inappropriately here Greg.

      3. 3.1.3

        But it should also trigger 112 lack of enablement if the “analysis engine” is claimed and argued for performing novel functional features, but only described or taught by an empty black box with that label. Otherwise the box could just as well be labeled “invention engine.”


          …which does call to mind the “Turtles All The Way Down” comments as to how far do you parse (demand/define/etc) sub-parts of an item?

  3. 2

    When one company buys another they generally inherit the legal mistakes of the acquired company, as here [missing a bar date].

  4. 1

    This “may not appeal the institution decision” argument seems a little disingenuous.

    The issue is the state of affairs AT the time of the institution decision rather than the per se institution decision itself.

    If the entity (here, PTAB) simply lacks the statutory authority to MAKE an institution decision, there really is no extant institution decision to be (per se) appealed, and the argument being advanced is still-born.

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