The Federal Circuit’s Harmonic Inc. v. Avid Tech decision last week is the latest in a string of decisions from the CAFC ruling that it lacks jurisdiction to review various aspects of PTAB institution decisions.  In this case, the CAFC ruled that it lacks jurisdiction to review the PTAB’s decision not to institute an IPR on grounds for unpatentability that it found to be “redundant” to the grounds of unpatentability on which it initiated IPR.

As background, Harmonic filed an IPR petition to review the patentability of Avid’s patent.  For claims 1-16, the PTAB instituted review on an obviousness ground based on two references, Haskell and Rossmere.  The PTAB denied institution based on four other grounds, calling them “redundant” of the instituted grounds.  Ultimately, the PTAB’s final written decision concluded that claims 1-10 were unpatentable in view of the Haskell/Rossmere combination, but ruled that claims 11-16 were patentable over the combination.  Harmonic appealed, arguing 1) that the PTAB should have ruled claims 11-16 unpatentable in its final written decision and 2) in light of the PTAB’s conclusion in its final written decision, it was compelled to revisit the grounds it previously deemed redundant.

Looking at the second issue, the CAFC recognized that it must first consider whether it has jurisdiction to review the question.  The CAFC first looked to 35 U.S.C. § 314(d), which prescribes that a “determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”  It then went through a brief history of its application of the statute (and its CBM counterpart).  See St. Jude v. Volcano (CAFC lacks jurisdiction to review decision not to institute IPR); In re Dominion Dealer Sols. (denying mandamus petition seeking review of PTAB decision not to institute IPR); In re Cuozzo Speed (CAFC lacks jurisdiction to review institution decision even after a final decision); Versata v. SAP (CAFC has jurisdiction to review whether a patent is a “covered business method patent”); Achates v. Apple (CAFC lacks jurisdiction to review whether petition was time barred); Synopsys v. Mentor Graphics (declining to review merits of PTAB decision to institute on some grounds but not others, but finding no statutory requirement that the Board address every claim raised in an IPR petition).  The CAFC ultimately found that a decision to institute on some grounds, but not on other “redundant” grounds is simply a combination of a decision to institute IPR on some grounds and a decision to deny IPR on others, both of which are non-appealable under its Cuozzo and St. Jude decisions.  Accordingly, the CAFC found that it lacks jurisdiction to review the PTAB’s decision not to institute review on “redundant” grounds.

For now, it seems settled that PTAB decisions to institute or not to institute on various grounds are nonappealable no matter how you slice it.  We’ll see how long it stays settled once the Supreme Court reviews whether the PTAB’s decision to institute an IPR proceeding in Cuozzo is judicially unreviewable.