Apple Asks SCOTUS to Hear Inter Partes Review Appeal

In its Monday-filed petition, Apple Inc. requested that the high court consider whether a rule promulgated by the Patent Trial and Appeal Board (PTAB) directing it to deny petitions for inter partes review (IPR) in certain instances is lawful. Secondarily, Apple contended that the Supreme Court should address whether the Federal Circuit has jurisdiction over an IPR denial appeal and whether it may confer mandamus relief upon the aggrieved petitioner.

The case originated in February 2020 when Apple filed three IPR petitions disputing patent claims that the respondents, Optis Cellular Technology LLC, Optis Wireless Technology, LLC, and Unwired Planet International Limited, alleged Apple infringes in a pending lawsuit. The PTAB denied IPR based on the “NHK-Fintiv” rule, which instructs the administrative body to decline review “when it determines that IPR would be inefficient in light of pending infringement litigation involving the same patent.”

Apple appealed, and before briefing commenced, a Federal Circuit motions panel ordered Apple to show cause as to why its appeals should not be dismissed for lack of jurisdiction. The court subsequently rejected Apple’s arguments in a non-precedential order. To date, the petitioner noted, there have been several appeals to the Federal Circuit similarly challenging denials of IPR petitions under the contested rule, all of which have been dismissed.

In this week’s petition, Apple argued that the NHK-Fintiv rule falls outside the PTAB’s grant of congressional authority. “Congress gave the PTO no authority to decline to institute IPR merely because a parallel infringement suit was pending, even though Congress did grant such authority when other types of proceedings involving the same patent are ongoing,” the filing said.

The rule also has arbitrary consequences, Apple contended, because it requires the PTAB to guess when a trial in the parallel infringement proceeding will conclude. Trial dates, the petitioner asserted, are often pushed back. Thus, a delayed trial coupled with a denial of IPR, causes the PTAB to “irremediably deprive[] the accused infringer of the expeditious patentability review that IPR was intended to provide,” the petition said.

Apple additionally cautioned that if not altered, the Federal Circuit’s view of the matter will permit the PTAB to impermissibly restrict the availability of IPR. Treating such decisions as impervious to judicial review, Apple added, “endangers a tool that Congress determined to be essential to the integrity of the patent system.”

Apple is represented by  Wilmer Cutler Pickering Hale and Dorr.