1. “Did the USPTO violate the Constitution’s separation of powers, the America Invents Act (‘AIA’), and the APA by denying institution based solely on a preference for ex parte reexamination?” 2. “Did the USPTO exceed its authority and violate the Fifth Amendment’s Due Process Clause by applying a novel rationale retroactively?” 3. “Is the USPTO’s basis for denying IPR here arbitrary and irrational, contrary to the Fifth Amendment and the APA?” 4. “Did the USPTO violate the Fifth Amendment and the APA by disregarding its own precedent?”
1. “The PTO did not . . . act to categorically foreclose access to IPR. The PTO simply concluded that EPR, rather than IPR, would be the most efficient use of resources here because of the examiner’s greater familiarity with the underlying issues. Intel has not shown any clear and indisputable entitlement to disturb that fact-specific conclusion given the limits on our reviewability of non-institution decisions.”
2. “We have considered Intel’s remaining arguments and find them unpersuasive.”
3. “Intel has also not presented a colorable constitutional claim. It has not shown the PTO violated the Due Process Clause based merely on acceptance of IPR filing fees and Intel’s unilateral expectation that IPR would not be denied in favor of other administrative review proceedings.”
4. “Nor has Intel presented a colorable equal protection claim. Intel’s arguments that the PTO ‘had no rational basis for requiring EPR over IPR in this case but not others,’ . . . and that the PTO ‘ignor[ed]’ its precedent on whether to deny institution under 35 U.S.C. § 325(d) . . . amount to nothing more than disagreements with the outcome and how the PTO may have applied (or not applied) certain statutes related to institution. As such, they do not present reviewable challenges.”
