Apple instituted an IPR proceeding challenging the validity of Achates’ patents.  Achates contended to the PTAB that it should not institute the IPR, because, under 35 U.S.C. § 315(b), the real parties in interest were parties who Achates had sued more than a year ago who are in privity with Apple.  The PTAB held that these other parties were not the real parties in interest and were not in privity with Apple, and therefore Apple’s IPR petition was not untimely under § 315(b) as being outside the one-year time period.  Achate appealed the PTAB’s decision to the Federal Circuit, who affirmed.  The court held that Achate’s appeal was an appeal of the PTAB’s decision to institute the IPR itself, and pursuant to 35 U.S.C. § 141(c), only final written decisions of the PTAB regarding IPRs can be appealed to the Federal Circuit. 

Achates Reference Publishing, Inc. v. Apple, Inc., Case Nos. 2014-1767, -1788 (September 30, 2015); Opinion by: Linn, joined by Prost and Lourie; Appealed From: USPTO, Patent Trial and Appeal Board. Read the full opinion here.

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