“An interested party can challenge a patent by filing a petition for ‘inter partes review’ (‘IPR’) with the Patent Trial and Appeal Board (the ‘PTAB’) within the Patent and Trademark Office. The statute establishing IPR includes two provisions, the interpretation of which have sharply divided the en banc Federal Circuit. The first concerns timing. It states that IPR ‘may not be instituted if the petition requesting the proceedings is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent.’ 35 U.S.C. § 315(b). The second concerns appeal rights. It states that the ‘determination whether to institute [IPR] . . . is final and nonapppealable.’ 35 U.S.C. § 314(d). Despite Congress making the determination whether to institute IPR ‘nonappealable’ in § 314(d), the en banc Federal Circuit recently held that a decision to institute IPR is appealable, where that decision is based on a finding that § 315(b)’s time-bar did not apply. That decision—over a vigorous dissent—opened the door to the appeal below. But more recently, the en banc Federal Circuit held that when a patent infringement complaint is served on the petitioner but later dismissed without prejudice, § 315(b) does apply to bar any petition for IPR filed beyond one year from service of the dismissed complaint. The panel below dismissed the appeal based solely on this more recent case. The questions presented are:” 1. “Whether, under § 314(d), a party may appeal the PTAB’s application of § 315(b)’s time-bar provision made during its decision to institute IPR.” 2. “Whether § 315(b) precludes the PTAB from instituting IPR when the petitioner sought IPR more than a year after it was served with a patent infringement complaint that was voluntarily dismissed without prejudice.”
