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ARRIS INTERNATIONAL PLC v. Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Intervenor (2018)

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United States Court of Appeals, Federal Circuit.

ARRIS INTERNATIONAL PLC, Appellant v. CHANBOND, LLC, Appellee Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Intervenor

2018-2426, 2018-2427, 2018-2428, 2018-2429, 2018-2430

Decided: December 27, 2018

Before Prost, Chief Judge, O’Malley and Stoll, Circuit Judges. Patrick D. McPherson, Duane Morris LLP, Washington, DC, Matthew Christopher Gaudet, Counsel, Duane Morris LLP, Atlanta, GA, Diana Sangalli, Duane Morris LLP, Houston, TX, for Appellant Robert Whitman, Elizabeth A. Long, Attorney, Andrea Pacelli, Mark Stewart Raskin, Mishcon de Reya New York LLP, New York, NY, for Appellee Farheena Yasmeen Rasheed, Acting Deputy Solicitor, Thomas W. Krause, Esq., Deputy Solicitor, William LaMarca, Special Counsel, Joseph Matal, Acting Solicitor, United States Patent and Trademark Office, Office of the Solicitor, Alexandria, VA, Mark R. Freeman, Melissa N. Patterson, Attorneys, Department of Justice, Civil Division, Appellate Staff, Washington, DC, for Intervenor



ChanBond, LLC moves to dismiss these appeals for lack of jurisdiction. ARRIS International PLC opposes the motion. ChanBond replies. The Director of the United States Patent and Trademark Office moves out of time to intervene in support of dismissal.

ChanBond is the owner of U.S. Patent Nos. 7,941,822; 8,341,679; and 8,984,565. In September 2015, ChanBond sued various telecommunications companies in the United States District Court for the District of Delaware for infringing those patents. In February 2018, ARRIS filed five petitions requesting inter partes review (IPR) of various claims of those patents. In its preliminary responses, ChanBond argued that the petitions were time-barred under 35 U.S.C. § 315(b) because ARRIS was in privity with the defendants in the Delaware action and ARRIS filed its petitions more than a year after the filing of that complaint. The Board agreed and denied institution of all five petitions. ARRIS then filed these appeals from the denial of institution decisions.

ChanBond argues that ARRIS’s appeals are foreclosed under St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014). We agree. As is the case here, the petitioner in St. Jude appealed from the Board’s decision to deny institution of IPR based on the Board’s determination that the petition was time-barred under § 315(b). We explained the statutory contrast between a “determination ․ whether to institute” a proceeding, which is “final and nonappealable,” 35 U.S.C. § 314(d), and the “final written decision” determining patentability, 35 U.S.C. § 318(a), and we held that our review authority under 28 U.S.C. § 1295(a)(4)(A) does not extend to appeals from decisions not to institute. St. Jude, 749 F.3d at 1375–76.

Nothing in Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018) (en banc), undermines that holding. Wi-Fi One concerned review of the Board’s § 315(b) determination in a final written decision, not a decision denying institution. See id. at 1371. As both Wi-Fi One and subsequent precedent have reiterated, “[i]f the Director decides not to institute, for whatever reason, there is no review.” Saint Regis Mohawk Tribe v. Mylan Pharm. Inc., 896 F.3d 1322, 1327 (Fed. Cir. 2018); see also Wi-Fi One, 878 F.3d at 1372 (noting that “the agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion” (quoting Cuozzo Speed Techs., LLC v. Lee, ––– U.S. ––––, 136 S. Ct. 2131, 2140, 195 L.Ed.2d 423 (2016))).

ARRIS’s reliance on Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345 (Fed. Cir. 2018), in support of jurisdiction over these appeals is also misplaced. Far from review over a non-institution decision, Arthrex concerned the issue of whether a party could appeal from a final adverse judgment entered under 37 C.F.R. § 42.73(b). Arthrex distinguished St. Jude, stating that “St. Jude did not involve a similar situation, and the availability of appeal of final adverse judgment decisions was not directly addressed in that case.” Id. at 1349.

In view of the foregoing, we conclude that we lack jurisdiction to hear ARRIS’s appeals.


It Is Ordered That:

(1) The stay of the briefing schedule is lifted.

(2) The Director’s motion to intervene is granted. The revised official caption is reflected above.

(3) ChanBond’s motion to dismiss is granted. The appeals are dismissed.

(4) Each side shall bear its own costs.

O’Malley, Circuit Judge.

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