Federal Circuit Precedential

Holding:  A failure to provide sufficient information in a notice of appeal arising out of an IPR to comply with 37 C.F.R. § 90.2(a)(3)(ii) is not a jurisdictional issue that affects the authority of the Federal Circuit to review the appeal.

DMF owns US Patent No. 9,964,266 which relates to a compact recessed lighting system that can be installed in a standard electrical junction box.  AMP challenged some of the claims of the ‘266 Patent in an IPR.  The PTAB found that claim 17 of the ‘266 Patent was anticipated, but that AMP failed to show unpatentability of the rest of the claims.  AMP appealed the PTAB’s decision and the Federal Circuit affirmed the PTAB’s decision on the all of the claims, except for claim 22, since the PTAB failed to address the patentability of this claim.  On remand, the PTAB upheld its decision that AMP failed to show unpatentability of claim 22.  AMP appealed once again to the Federal Circuit.

DMF argued that the Federal Circuit lacked jurisdiction over the appeal since AMP failed to timely file a notice of appeal that complied with 37 C.F.R. § 90.2(a)(3)(ii).  Section 90.2 requires that for “appeals arising out of an inter partes review . . . notice of the appeal must provide sufficient information to allow the Director to determine whether to exercise the right to intervene in the appeal[.]”  To decide this issue, the Federal Circuit focused on the distinction between a jurisdictional requirement that marks the bounds of a court’s power and a procedural requirement that is enacted to govern the litigation process.  A procedural requirement affects jurisdiction only if Congress clearly states that it should be jurisdictional.

In deciding on the nature of Section 90.2, the Federal Circuit disregarded the fact that Section 90.2 is a regulation enacted by an executive agency and not a statute enacted by Congress.  The Federal Circuit found that Section 90.2 does not discuss, and makes no clear statement about the court’s authority to hear an appeal of an IPR.  Therefore, Section 90.2 is not jurisdictional, and a failure to timely file a notice of appeal in compliance with 37 C.F.R. § 90.2(a)(3)(ii) does not affect the Federal Circuit’s authority to hear the appeal.

Full Opinion (PDF)