Federal Circuit Provides Two-Part Analysis for Determining Reviewability of PTAB Institution Decisions

Author: Jeff T. Watson
Editor: Elizabeth D. Ferrill

In Husky Injection Molding Systems Ltd. v. Athena Automation Ltd., Nos. 15-1726, -1727 (Fed. Cir. Sept. 23, 2016), the Federal Circuit concluded that it lacked the authority to review the Board’s determination in its institution decision that assignor estoppel does not apply at the PTO. The Court identified a two-part framework to determine whether it may review a challenge to an institution decision. First, the Court must determine whether the question falls within one of the three reviewable categories mentioned in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131, 2141 (2016). Second, the court must determine “if, despite the challenge being grounded in a ‘statute closely related to that decision to institute,’ it is nevertheless directed to the Board’s ultimate invalidation authority to invalidate with respect to a specific patent.” Id. at 14.

In this case, the Court held that the issue of whether assignor estoppel applies at the PTO neither relates to one of the three reviewable categories from Cuozzo nor is it directed to the Board’s ultimate invalidation authority. Judge Plager dissented on the reviewability of the institution decision, stating that the majority decision “may contribute to the already-existing confusion regarding which matters this court can review on appeal from a final decision by the Board.” A more detailed discussion of the Federal Circuit’s decision can be found on Finnegan’s AIA blog.


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