Apple Inc. v. Vidal, No. 22-1249 (Fed. Cir. 2023)Annotate this Case
Plaintiffs, Apple and four other companies, have repeatedly been sued for patent infringement and thereafter petitioned the Patent and Trademark Office (PTO) to institute inter partes reviews (IPRs), under 35 U.S.C. 311–319, with unpatentability challenges to patent claims that were asserted against them in court. They sued the PTO under the Administrative Procedure Act (APA), 5 U.S.C. 701– 706, challenging instructions issued to the Patent Trial and Appeal Board concerning how to exercise, under delegation by the Director, the Director’s discretion whether to institute a requested IPR. Plaintiffs assert that the instructions are likely to produce too many denials.
The district court dismissed the APA action, finding that the Director’s instructions were made unreviewable by 35 U.S.C. 314(d): “The determination by the Director whether to institute an inter partes review under [section 314] shall be final and nonappealable.” The Federal Circuit affirmed the unreviewability dismissal of plaintiffs’ challenges to the instructions as being contrary to the statute and arbitrary and capricious. No constitutional challenges are presented. The court reversed the unreviewability dismissal of the challenge to the instructions as having been improperly issued because they had to be, but were not, promulgated through notice-and-comment rulemaking under 5 U.S.C. 553. Apple had standing to present that challenge.
The court issued a subsequent related opinion or order on March 14, 2023.
The court issued a subsequent related opinion or order on March 15, 2023.