Federal Circuit Lacks Jurisdiction to Review Patent Trial and Appeal Board Termination of Re-examination Proceedings
December 21, 2017

In a non-precedential decision, the Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) inter partes review decision holding that the claims of Illumina, Inc.’s U.S. Patent No. 7,955,794 (“the ’794 patent”) are not anticipated by an earlier U.S. patent publication because the publication is not prior art.  In addition, the Federal Circuit dismissed Ariosa’s appeal of the PTAB’s termination of three ex-parte reexamination proceedings directed to the ‘794 patent, stating that the Federal Circuit lacks jurisdiction to review the PTAB’s termination decision.

Since 2014, Ariosa’s validity challenges of Illumina’s ‘794 patent include two inter partes review petitions, three ex parte reexamination requests, and a defense of invalidity in response to Illumina’s district court complaint for infringement.  During the inter partes review proceedings, Illumina requested that the PTAB terminate all three ex parte reexamination requests filed by Ariosa on the grounds they were duplicative of issues raised in the inter partes reviews, would delay the infringement proceedings, and would improperly evade the doctrine of assignor estoppel.  Illumina cited the legislative history of the AIA and noted that Congress contemplated termination of multiple proceedings to avoid serial invalidity attacks.  Illumina argued the AIA authorizes the Director to reject any request for ex parte reexamination or petition for post-grant or inter partes review on the basis that the same or substantially the same prior art or arguments were previously presented to the Office, despite raising a substantial new question of patentability.

Ariosa responded by arguing that copendency of multiple patent office proceedings is contemplated by the AIA and that substantial new questions of patentability can exist even with art that has been previously considered.  Ariosa points out the grounds presented in the ex parte reexaminations were never fully and substantively considered and thus were not duplicative of any prior proceeding.  The Board never heard the merits of the invalidity arguments since the only issue substantively considered was whether the reference cited as an anticipating reference was in fact prior art.  In addition, Ariosa noted the Board denied institution of a second inter partes review over two references that served as the basis of two of the reexamination requests.

Ariosa’s arguments were not persuasive and the Board exercised its discretion to terminate the ex parte reexamination proceedings.  The Board noted that although the prior art disclosures relied upon in the reexamination requests were somewhat different from the instant IPR proceedings, the AIA contemplates denial of review when substantially the same prior art or arguments were previously presented to the Office.  In its termination decision, the Board indicated in a footnote that the termination of the reexamination proceedings is neither a resolution on the merits of any substantial new question of patentability nor is it a determination of the patentability of any claims over the rejections on which reexamination was granted.

On appeal, the Federal Circuit reiterated that the Board’s decision to terminate the ex-parte reexaminations was not a final decision on patentability and, therefore, the Federal Circuit did not have jurisdiction to review the PTAB’s termination decision.

Although the decision is nonprecedential, it does suggest that the Board’s decisions to terminate parallel Office proceedings are generally not appealable, similar to the Board’s decisions to not institute inter partes review of one or more claims.

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