May 19, 2020

More Mischief from Exempting Agency Action from Review: Real Party in Interest in IPR not Reviewable

In ESIP Series 2, LLC v. Puzhen Life USA, LLC, [2019-1659] (May 19, 2020), the Federal Circuit affirmed the institution of the IPR as non-reviewable and affirmed the Board’s obviousness determination of claims of U.S. Patent No. 9,415,130, which relates to “a novel system and method for combining germicidal protection and aromatic diffusion in enclosed habitable spaces.”

Based on the prior art and expert testimony, the Board determined that the challenged claims would have been obvious. The Federal Circuit found no error in the Board’s decision to credit the opinion of one expert over another, and would not reweigh evidence on appeal. The Federal Circuit found that substantial evidence supported the Board’s finding that the prior art made the invention obvious.

Because the Board’s obviousness conclusion was not legally erroneous and the fact findings are supported by substantial evidence, the Federal Circuit affirmed the obviousness determination.

On the issue of whether the Petition properly named the real party in interest, based upon Cuozzo Speed Techs., LLC v. Lee, and Thryv, Inc v. Click-To-Call Techs., LP, the Federal Circuit found no principled reason why preclusion of judicial review under §314(d) would not extend to a Board decision concerning the “real parties in interest” requirement of § 312(a)(2). Accordingly, the Federal Circuit held that ESIP’s challenge to the Board’s “real parties in interest” determination “raises ‘an ordinary dispute about the application of’ an institution-related statute,” and that § 314(d) precludes its review of that determination.