On October 30, 2020, Chris Loh was quoted in Bloomberg Law on appeals to the U.S. Court of Appeals for the Federal Circuit arguing that the Patent Trial and Appeal Board (PTAB) precedent on instituting patent review trials when parallel litigation is pending oversteps both patent law and the Administrative Procedure Act.
According to the article, the Federal Circuit denied eight of the sixteen appeals. If the court had taken the appeals, it could have shed light on just what actions by the board are beyond the court’s power to review, as institution decisions are generally unappealable.
The 2011 America Invents Act, which created the inter partes review (IPR) process, bars Federal Circuit review of decisions on whether to institute IPRs. The Supreme Court’s April decision in Thryv Inc. v. Click-to-Call Technologies LP extended that prohibition to questions closely related to institution.
But Thryv only limited the Federal Circuit’s jurisdiction over “ordinary disputes” about “institution-related statutes,” Loh said. These appeals gave the Federal Circuit an opportunity to “shed light on threshold questions,” he said in an email.
Those threshold questions included whether the Federal Circuit thinks PTAB precedential decisions give rise to extraordinary disputes, what specific sections of the AIA the Federal Circuit considers to be “institution-related,” and whether arguments that the PTAB exceeded its authority or violated the APA can overcome express limits on appellate review, Loh said.
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