Intel Corporation, et al. v. John A. Squires, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office, et al.

Congress established inter partes review (IPR) to provide an efficient administrative alternative to protracted federal court litigation for challenging the validity of dubious patents. Under 35 U.S.C. § 314(a), the Director of the U.S. Patent and Trademark Office (PTO) has authority to decide whether to institute an IPR to review a challenged patent. Section 314(d) further provides that “[t]he determination by the Director whether to institute an inter partes review … shall be final and nonappealable.” Petitioners brought claims under the Administrative Procedure Act (APA) challenging a PTO rule that has curtailed access to IPR by setting restrictive, non-statutory standards for deciding whether to institute an IPR. Petitioners do not challenge any particular “determination … whether to institute an [IPR],” but rather seek prospective relief setting aside the challenged rule as contrary to law and arbitrary and capricious. The Federal Circuit held that § 314(d) precludes review of those claims and later affirmed the dismissal of petitioners’ only reviewable claim. The question presented is whether 35 U.S.C. § 314(d), which bars judicial review of “[t]he determination … whether to institute an inter partes review,” applies even when no institution decision is challenged to preclude review of PTO rules that set standards governing institution decisions, particularly when those rules are based on a misinterpretation of § 314(a) to supposedly confer unlimited discretion on the Director to deny institution for any reason.