Saturday, February 26, 2022

CAFC tackles USC 315 and estoppel in

The issue

One other provision is central to the issue presented to us—one of the two estoppel provisions of the IPR scheme set out in chapter 31 of Title 35, U.S. Code. The provision at issue here is § 315(e)(1), which states: The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the [PTO] with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review. 35 U.S.C. § 315(e)(1).

because the actions or underlying findings or conclusions were “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law,” § 706(2)(A), and “in excess of statutory jurisdiction, authority, or limitations, or short of statutory right,” § 706(2)(C). See J.A. 16, 38–42. In its prayer for relief, also requested a permanent injunction preventing the PTO from applying the General Policy “to grounds presented in any future requests or petitions.” J.A. 43.

When determining whether a statute precludes judicial review, we apply a “‘strong presumption’ in favor of judicial review.” Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 273 (2016) (quoting Mach Mining, LLC v. EEOC, 575 U.S. 480, 486 (2015)); see also SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018). Although a statute need not explicitly state that judicial review is unavailable for preclusion to be found, the presumption of reviewability may be overcome only by “clear and convincing indications, drawn from specific language, specific legislative history, and inferences of intent drawn from the statutory scheme as a whole, that Congress intended to bar review.” Cuozzo, 579 U.S. at 273 (cleaned up); see also SAS, 138 S. Ct. at 1359; Bowen v. Michigan Academy of Family Physicians, 476 U.S. 667, 671–73 (1986). In Block v. Community Nutrition Institute, the Supreme Court explained: In the context of preclusion analysis, the “clear and convincing evidence” standard is not a rigid evidentiary test but a useful reminder to courts that, where substantial doubt about the congressional intent exists, the general presumption favoring judicial review of administrative action is controlling. That presumption does not control in cases . . . [where] the congressional intent to preclude judicial review is “fairly discernible” in the detail of the legislative scheme.

We conclude that § 303(c) does not apply to the estoppel decisions at issue here. Such an application would breach the provision’s textual limits and would be contrary to the just-discussed decisions addressing § 303(c). It also would run counter to precedents adhering to the textual limits of other non-reviewability provisions in Title 35. See SAS, 138 S. Ct. at 1359–60 (holding that § 314(d) did not bar review of consistency of Board’s policy of partial institutions


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