Addressing for the first time the question of whether the Patent Trial and Appeal Board (PTAB or Board) retains jurisdiction over an inter partes review (IPR) during the 63 days after a Final Written Decision, the PTAB held that it was divested of jurisdiction as soon as either party files a notice of appeal to the US Court of Appeals for the Federal Circuit. Smart Microwave Sensors GmbH v. Wavetronix LLC, Case No. IPR2016-00488, Paper 59 (PTAB, Aug. 24, 2017) (Fishman, APJ).

Smart Microwave Sensors filed an IPR petition challenging the validity of a patent owned by Wavetronix. During the pendency of the IPR, Wavetronix filed an application to reissue the patent in question. Ultimately, the PTAB issued a Final Written Decision finding Wavetronix’s patent invalid. Three days after the Final Written Decision was issued, Wavetronix filed a notice of appeal with the Federal Circuit. 

After Wavetronix filed the notice of appeal, Smart Microwave requested a conference call with the PTAB to request a stay of the pending reissue application until after the Federal Circuit could consider Wavetronix’s appeal. Relying on 37 CFR § 42.122(a), Smart Microwave noted that the PTAB had the authority to stay another proceeding before it “during the pendency of the inter partes review.” Smart Microwave argued that because a notice of appeal of a Final Written Decision may be filed within 63 days of the decision, the IPR remained pending during this time and the PTAB thus had the authority to stay the reissue proceeding.

The PTAB disagreed, explaining that it is divested of jurisdiction as soon as either party files a notice of appeal, because at that time the matter is no longer pending before the PTAB. Although a limited number of exceptions to the rule have been recognized, the PTAB found that such exceptions are generally viewed as purely ministerial functions and do not include the authority to stay other proceedings, such as the reissue. Under the facts of the present case, the PTAB found that staying the reissue proceeding was not purely ministerial and thus denied the motion.

Practice Note: Parties participating in IPR proceedings should be aware that the PTAB is divested of jurisdiction as soon as either party files a notice of appeal. If a party intends to seek additional rulings from the PTAB, it should act quickly to make such a request before the other party files a notice of appeal.