United States Court of Appeals 

for the Federal Circuit ______________________ 

ACHATES REFERENCE PUBLISHING, INC.,

Appellant

v.

APPLE INC.,

Appellee

______________________ 

2014-1767

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2013-

00080.

- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - 

ACHATES REFERENCE PUBLISHING, INC.,

Appellant

v.

APPLE INC.,

Appellee

______________________ 

2014-1788

______________________ 
2 ACHATES REFERENCE PUBLISHING v. APPLE INC. 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2013-

00081.

______________________ 

Decided: September 30, 2015

______________________ 

VINCENT MCGEARY, McGeary Cukor LLC, Morristown, NJ, argued for appellant. Also represented by 

MICHAEL CUKOR; BRAD PEDERSEN, Patterson Thuente 

Pedersen, P.A., Minneapolis, MN; WAYNE S. BREYER,

JASON PAUL DEMONT, KENNETH OTTESEN, Kaplan, Breyer, 

Schwarz & Ottesen, LLP, Matawan, NJ. 

JOSEPH GUERRA, Sidley Austin LLP, Washington, DC, 

argued for appellee. Also represented by JEFFREY PAUL 

KUSHAN, SCOTT BORDER, JOSEPH A. MICALLEF, ANNA 

MAYERGOYZ WEINBERG. 

KAKOLI CAPRIHAN, Office of the Solicitor ̧ United 

States Patent and Trademark Office, Alexandria, VA, 

argued for intervenor Michelle K. Lee. Also represented 

by THOMAS W. KRAUSE ̧ FRANCES LYNCH, JAMIE LYNNE 

SIMPSON, SCOTT WEIDENFELLER.

______________________ 

Before PROST, Chief Judge, LOURIE and LINN, Circuit 

Judges.

LINN, Circuit Judge. 

Achates Reference Publishing, Inc. (“Achates”) appeals from the decisions of the Patent Trial and Appeal 

Board (the “Board”) in inter partes review (“IPR”) proceedings instituted on petitions filed by Apple Inc. (“Apple”)

against Achates’ U.S. Patents No. 5,982,889 (the “’889 

patent”) and No. 6,173,403 (the “’403 patent”) (collectively, the “patents-at-issue”) and determining that claims 1–
ACHATES REFERENCE PUBLISHING v. APPLE INC. 3

4 of the ’889 patent and claims 1–12 and 17–19 of the ’403 

patent were invalid. See Apple Inc. v. Achates Reference 

Publ’g, Inc., IPR2013-00081, 2014 WL 2530789 (P.T.A.B. 

June 2, 2014) (“’889 final written decision”); Apple Inc. v. 

Achates Reference Publ’g, Inc., IPR2013-00080, 2014 WL 

2530788 (P.T.A.B. June 2, 2014) (“’403 final written 

decision”). Achates contends that the Board’s decisions 

were outside of the Board’s statutory authority because 

the underlying petitions for IPR were time-barred under 

35 U.S.C. § 315(b). As part of its appeal, Achates also 

challenges the Board’s denial of Achates’ motion for 

discovery. See Apple Inc. v. Achates Reference Publ’g, Inc., 

2013 WL 6514049 (P.T.A.B. Apr. 3, 2013) (“Discovery 

Decision”). Because the Board’s determinations to institute IPRs in this case are final and nonappealable under 

35 U.S.C. § 314(d), this court lacks jurisdiction and dismisses the appeals. 

I. BACKGROUND

On June 20, 2011, Achates sued QuickOffice, Inc. 

(“QuickOffice”) along with certain other parties (collectively, the “codefendants”) in district court for infringing 

the patents-at-issue. See Complaint, Achates Reference 

Publ’g, Inc. v. Symantec Corp., No. 2:11-cv-00294 (E.D. 

Tex. June 20, 2011), ECF No. 1. One year later, Achates 

joined Apple in the suit and alleged that it also infringed

the patents. See Amended Complaint, Achates Reference 

Publ’g, Inc. v. Symantec Corp., No. 2:11-cv-00294 (E.D. 

Tex. June 20, 2012), ECF No. 176. On December 14, 

2012, Apple filed petitions for IPR in the United States 

Patent and Trademark Office (“Patent and Trademark 

Office”) against each of the patents-at-issue. See ’889 

final written decision, at *5; ’403 final written decision, at 

*5. 

Achates, in responding to the petitions, contended 

that, based on a blank indemnification agreement, Apple 

had a relationship with QuickOffice (and maybe other 
4 ACHATES REFERENCE PUBLISHING v. APPLE INC. 

codefendants as well) and that such relationship caused 

Apple’s petitions for IPR to be time-barred under 35 

U.S.C. § 315(b). That section states: 

An inter partes review may not be instituted if the 

petition requesting the proceeding is filed more 

than 1 year after the date on which the petitioner, 

real party in interest, or privy of the petitioner is 

served with a complaint alleging infringement of 

the patent. The time limitation set forth in the 

preceding sentence shall not apply to a request for 

joinder under subsection (c).

35 U.S.C. § 315(b). To support its contention, Achates 

moved for discovery of evidence to prove Apple’s specific 

relationships with the codefendants. The Board denied 

that motion, finding no basis to believe that even if the 

blank indemnification agreement had been signed, it 

would show QuickOffice or any other codefendants to be 

real parties in interest or in privity with Apple as those 

terms are used in § 315(b). See Discovery Decision at *1.

The Board found that none of the codefendants were 

real parties in interest or privies of Apple. Specifically, 

the Board concluded that there was no evidence that any 

of the codefendants had “the right to intervene or control 

Petitioner’s defense to any charge of patent infringement” 

and that Apple and codefendants had “distinct interests 

in the related [district court] litigation.” See Apple Inc. v. 

Achates Reference Publ’g, Inc., 2013 WL 8595560, at *9

(P.T.A.B. June 3, 2013) (the “’889 institution decision”); 

Apple Inc. v. Achates Reference Publ’g, Inc., 2013 WL 

8595559, at *10 (P.T.A.B. June 3, 2013) (the “’403 institution decision”). Accordingly, the Board, acting as the 

Director’s delegee, instituted IPR proceedings for both 

patents.

During the merits phase of the IPRs, Achates continued to argue that Apple’s petitions were time-barred 

under § 315(b). In its final written decisions, the Board 
ACHATES REFERENCE PUBLISHING v. APPLE INC. 5

reaffirmed its earlier decisions that the IPR proceedings 

were not time-barred. ’889 final written decision at *7; 

’403 final written decision at *8. The Board ultimately 

invalidated all the challenged claims as either anticipated 

and/or obvious. See ’889 final written decision at *24; ’403 

final written decision at *29. 

On appeal, Achates challenges the Board’s final written decisions, arguing that the Board erred in denying its 

motions for discovery and in concluding that Apple’s 

petitions were not time-barred under § 315(b). Achates 

does not appeal the Board’s substantive decisions that the

challenged claims are invalid. Apple counters Achates’ 

arguments and asserts that because the question of 

whether the petitions were time-barred goes to the propriety of the decision to initiate the IPR, this court lacks 

jurisdiction over the appeal under § 314(d). In the alternative, Apple argues that the Board’s decisions should be 

affirmed on the merits.

II. DISCUSSION

A. The Statutory Background

In 2011, Congress amended title 35 of the United 

States Code to create IPR, post-grant review (“PGR”) and 

covered business method review (“CBMR”) proceedings. 

See 35 U.S.C. §§ 311–319 (IPR); Id. at §§ 321–329 (PGR); 

Leahy-Smith America Invents Act (“AIA”) § 18, Pub. L. 

No. 112–29, 125 Stat. 284, 329–31 (2011) (CBMR). CBMR 

proceedings are “regarded as, and . . . employ the standards and procedures of, a [PGR] under chapter 32

[§§ 321–329] of title 35, United States Code, subject to” 

certain exceptions not relevant here. AIA § 18(a)(1).

Both IPR and CBMR proceed in two stages. In the 

first stage, the Director determines whether to institute

IPR or CBMR. By regulation, “[t]he Board institutes the 

trial on behalf of the Director.” 37 C.F.R. § 42.4; see also

37 C.F.R. §§ 42.100(a) (explaining that IPR proceedings 
6 ACHATES REFERENCE PUBLISHING v. APPLE INC. 

are subject to these trial procedures); 42.300(a) (same for 

CBMR). In the second phase, the Board conducts the IPR 

or CBMR proceedings on the merits and issues a final 

written decision. 

Based on the petitions and any responses, the Board

decides whether there are sufficient grounds to institute 

the proceedings—in IPR petitions there must be a “reasonable likelihood” that the petition will prevail, 35 

U.S.C. § 314(a), and in CBMR petitions it must be “more 

likely than not,” 35 U.S.C. § 324(a). An IPR proceeding

“may not be instituted if the petition requesting the 

proceeding is filed more than 1 year after the date on 

which the petitioner, real party in interest, or privy of the 

petitioner is served with a complaint alleging infringement of the patent.” § 315(b). No analogous time-bar 

exists for CBMR proceedings. IPR proceedings are not 

limited to specific types of patents. On the other hand, 

CBMR proceedings are only permitted “for a patent that 

is a covered business method patent.” AIA § 18(a)(1)(E). 

Importantly, identically worded statutory provisions 

make explicit that “[t]he determination by the Director 

whether to institute [IPR or CBMR] under th[ese] section[s] shall be final and nonappealable.” See § 314(d)

and § 324(e), respectively. 

If a proceeding is instituted, the Board considers the 

merits and “issue[s] a final written decision with respect 

to the patentability of any patent claim challenged by the 

petitioner and any new claim added” during the proceedings. 35 U.S.C. §§ 318(a) (IPR), 328(a) (CBMR). 

“[P]art[ies] dissatisfied with the final written decision of 

the Patent Trial and Appeal Board under section[s]

[318(a) or 328(a)] may appeal the decision pursuant to 

sections 141 through 144.” Id. §§ 319 (IPR), 329 (CBMR). 

Sections 141 through 144 of title 35 generally explain that 

Board decisions are appealable to this court. Of particular relevance, 35 U.S.C. § 141(c) states, with emphasis 

added: 
ACHATES REFERENCE PUBLISHING v. APPLE INC. 7

A party to an inter partes review or a post-grant 

review who is dissatisfied with the final written 

decision of the Patent Trial and Appeal Board under section 318(a) or 328(a) (as the case may be) 

may appeal the Board’s decision only to the United States Court of Appeals for the Federal Circuit.

B. This Court’s Precedent

This court first addressed the reviewability of a Board 

decision not to institute an IPR in St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 

2014). In that case, the court recognized that “the [IPR] 

statute separates the Director’s decision to ‘institute’ the 

review, § 314, on one hand, from the Board’s ‘conduct’ of 

the review ‘instituted’ by the Director, § 316(c), and the 

Board’s subsequent ‘written decision,’ § 318, on the other.” 

Id. at 1375. Because the Director’s decision not to institute an IPR was not a “final written decision” under § 

318(a), it was held not within this court’s statutory grant 

of authority to review under §§ 141(c) or 318(a). See id. 

Moreover, the court held that the appeal of the noninstitution decision was within the express bar to appeals 

under § 314(d).

That same day, this court held that mandamus was 

unavailable to take an interlocutory appeal of the Director’s non-institution decision, largely because of the 

statutory scheme explained in St. Jude, and “section 

314(d)’s broad declaration” precluding appeals over the 

director’s decision “whether to institute” an IPR. In re 

Dominion Dealer Solutions, LLC, 749 F.3d 1379, 1381 

(Fed. Cir. 2014).

Recognizing that the court does not have interlocutory 

review power over the Director’s initiation decisions, 

parties have attempted to use collateral review through 

mandamus and the Administrative Procedure Act. This 

court has rejected the availability of mandamus and APA 

relief for interlocutory review of the Director’s initiation 
8 ACHATES REFERENCE PUBLISHING v. APPLE INC. 

decisions in IPR and CBMR because of the absence of any 

final written decision of the Board for this court to review, 

and because of the restriction in § 314(d). In re Procter & 

Gamble Co., 749 F.3d 1376, 1378 (Fed. Cir. 2014) (“Our 

analysis in St. Jude and Dominion . . . applies equally” 

well to interlocutory mandamus jurisdiction); Versata 

Dev. Grp., Inc. v. Lee (Versata III), 793 F.3d 1352 (Fed. 

Cir. July 13, 2015) (affirming the district court’s refusal to 

allow interlocutory review over the Director’s decision to 

institute CBMR). 

This court also has considered whether the Director’s 

institution decision is subject to review after a final 

written decision by the Board. In In re Cuozzo Speed 

Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015), the Director 

instituted an IPR of certain claims relying in part on 

references not cited in the petition. On appeal, Cuozzo 

argued that the IPR was improperly instituted because 

the petition-as-filed did not provide “a reasonable likelihood that the petition would prevail” as required 

by § 314(a). Id. at 1273. Cuozzo argued that the reviewability prohibition of § 314(d) applied only to interlocutory 

appeals, and that the initiation decision becomes available for review once the Board issues a final written decision. The court disagreed with Cuozzo and declined to 

review the initiation decision, remarking that § 314(d) “is 

not directed to precluding review only before a final 

decision” and cannot be directed only to precluding interlocutory appeals because §§ 319 and 141(c) already serve 

that role. Id. The court then recognized that “the IPR 

statute [does not] expressly limit the Board’s authority at 

the final decision stage to the grounds alleged in the IPR 

petition” and that “the failure to cite those references in 

the petition provides no ground for setting aside the final 

decision.” Id. at 1273 and 1274.

The court once again addressed the reviewability of 

an initiation determination, this time in the context of a 

CBMR in Versata Dev. Grp., Inc. v. SAP America, Inc.
ACHATES REFERENCE PUBLISHING v. APPLE INC. 9

(“Versata II”), 793 F.3d 1306 (Fed. Cir. 2015). There, SAP 

petitioned for review of Versata’s U.S. Patent No. 

6,553,350 (the “’350 patent”), alleging that the patent was 

a covered business method patent under AIA § 18. The 

Director, via the Board, decided to institute the CBMR, 

ruling that the ’350 patent was a “covered business method patent” as that term is defined in AIA § 18(d)(1). See

Versata II, 793 F.3d at 1314. On the merits, the Board 

concluded that the challenged claims were directed to an 

“abstract idea,” and were thus not patent-eligible under 

35 U.S.C. § 101. See id. at 1336. 

Versata appealed, arguing that the ’350 patent was 

not a covered business method patent and was also not 

invalid. The petitioner and the Patent and Trademark 

Office as intervenor argued that the question of whether 

the ’350 patent fell within the scope of the Board’s authority under § 18 as a “covered business method patent” was 

decided by the Board at the decision to institute stage, 

and was thus immunized from later judicial review at the 

final decision stage. The court disagreed.

The court first recognized the distinction between the 

final merits decision and the initiation decision: “institution and invalidation are two distinct actions.” Id. at 

1319. “[I]t is the merits of the final written decision that 

are on appeal; we are not here called upon to review the 

determination by the [Board] whether to institute a CBM 

review, and indeed [35 U.S.C. § 324(e)] expressly instructs 

that we may not.” Id. at 1315. The court went on to 

point out that although the issue of whether a patent is a 

CBM was first determined by the Director at the initiation stage, the same issue was necessarily implicated in 

the final merits determination and was appropriate for 

review because of the fundamental limitation of the 

Board’s “ultimate invalidation authority” in a CBMR to 

those patents that meet the CBM definition: 
10 ACHATES REFERENCE PUBLISHING v. APPLE INC. 

[O]ne of the limits on § 18 invalidation authority 

is that the patent at issue be a CBM patent. . . . If 

a particular patent is not a CBM patent, there is 

no proper pleading that could be filed to bring it 

within the [Board’s] § 18 authority.

Id. at 1320. Compare Cuozzo, 793 F.3d at 1274 (“The fact 

that the petition was defective is irrelevant because a 

proper petition could have been drafted.”)

As the court made clear, “[t]he distinct agency actions

[on initiation and at the merits phase] do not become the 

same just because the agency decides certain issues at 

both stages of the process. . . . Overlap of issues is not 

determinative.” Versata II, 793 F.3d at 1319. The basis 

for this court’s review of the CBM issue in Versata II was 

not merely that the Board decided it in the final determination stage but more significantly that it uniquely and 

fundamentally related to the Board’s “ultimate authority 

to invalidate” only CBM patents in a CBMR proceeding.

C. The Present Dispute

In this case, the Patent and Trademark Office and 

Apple argue that the Board’s determination that an IPR 

petition is timely is part of the determination whether to 

institute and is therefore nonappealable, even after the 

final written decision. They believe this case is analogous 

to Cuozzo. Achates responds that the question of whether 

Apple’s petition was time-barred goes to the Board’s 

ultimate authority to invalidate the patents, and therefore, under Versata II, is reviewable under § 319. We 

agree with Apple and the Patent and Trademark Office

that Versata II is limited to the unique circumstances of 

CBMR and that, following Cuozzo, the Board’s determination to initiate the IPRs in this case is not subject to 

review by this court under 35 U.S.C. § 314(d).

First, the § 315(b) time bar does not impact the 

Board’s authority to invalidate a patent claim—it only 
ACHATES REFERENCE PUBLISHING v. APPLE INC. 11

bars particular petitioners from challenging the claim. 

The Board may still invalidate a claim challenged in a 

time-barred petition via a properly-filed petition from 

another petitioner. Further, § 315(b) provides that “[t]he 

time limitation . . . shall not apply to a request for joinder 

under subsection (c).” 35 U.S.C. § 315(b). This means 

that an otherwise time-barred party may nonetheless 

participate in an inter partes review proceeding if another 

party files a proper petition. See 35 U.S.C. § 315(c). Just 

as the pleading in Cuozzo could have been sufficient by 

the inclusion of the missing prior art reference, see 793 

F.3d at 1274 (“The fact that the petition was defective is 

irrelevant because a proper petition could have been 

drafted.”), the timeliness issue here could have been 

avoided if Apple’s petition had been filed a year earlier or 

if a petition identical to Apple’s were filed by another 

party. This is in contrast to the issue in Versata II, where 

“no proper pleading [] could be filed to bring it within the 

[Board’s] § 18 authority.” 793 F.3d at 1320.

In addition, the time-bar here is not like the CBM 

classification addressed in Versata II. Versata II found 

that review of the CBM determination was proper because the determination was the “defining characteristic” 

of the Board’s “authority to invalidate” a patent in the 

specialized CBMR process. See Versata II, 793 F.3d at 

1320-21. The determination is “defining” because it 

subjects that patent “to a special [Board] power to invalidate.” Id. at 1321. Whether an IPR petition is filed one

year after the petitioner is served with an infringement 

complaint or one year and a day is not such a characteristic because compliance with the time-bar does not itself 

give the Board the power to invalidate a patent. Instead, 

the time-bar sets out the procedure for seeking IPR. 

Indeed, like other “[f]iling deadlines,” the IPR time bar 

here is merely a “rule[] that seek[s] to promote the orderly 

progress of litigation by requiring that the parties take 

certain procedural steps at certain specified times.” 
12 ACHATES REFERENCE PUBLISHING v. APPLE INC. 

Henderson ex rel. Henderson v. Shinseki, 562 U.S. 428, 

435 (2011) (therefore holding that the requirement that a 

veteran file an appeal within 120-days is not “jurisdictional”); see also Sebelius v. Auburn Reg’l Med. Ctr., 133 S. 

Ct. 817, 825 (2013) (“filing deadlines ordinarily are not 

jurisdictional”). 

Achates argues two additional theories for pulling this 

issue into this court’s jurisdiction to review the Board’s 

“final written decision.” First, Achates notes that the 

Board reaffirmed its time-bar determination in its final 

written decision and argues that this indicates that the 

time-bar determination is, in fact, part of the final written 

decision. As this court noted in Versata II, “[o]verlap of 

issues is not determinative, neither is the timing determinative.” 793 F.3d at 1319. That the Board considered 

the time-bar in its final determination does not mean the 

issue suddenly becomes available for review or that the 

issue goes to the Board’s ultimate authority to invalidate—the Board is always entitled to reconsider its own 

decisions. GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 

1313 (Fed. Cir. June 16, 2015). The Board’s reconsideration of the time-bar is still “fair[ly] characteriz[ed]” as 

part of the decision to institute. Id. at 1312.

Finally, Achates also contends that § 314(d) does not 

limit this court’s review of the timeliness of Apple’s petition under § 315, because § 314(d) says “[t]he determination by the Director whether to institute an inter partes 

review under this section shall be final and nonappealable” (emphasis added). Achates’ reading is too crabbed 

and is contradicted by this court’s precedent. The words 

“under this section” in § 314 modify the word “institute” 

and proscribe review of the institution determination for 

whatever reason. Thus, in St. Jude we held that § 314(d) 

precluded this court from reviewing the Patent and 

Trademark Office’s determination that § 315(b) (the same 

subsection at issue here) precluded it from instituting an 

IPR petition. See St. Jude, 749 F.3d at 1376. Likewise in 
ACHATES REFERENCE PUBLISHING v. APPLE INC. 13

GTNX, we held that § 324(e), which also precludes review 

of “determination[s] whether to institute . . . review under 

this section,” prevented this court from reviewing the 

Board’s decision that a petition was barred under 

§ 325(a)(1). See GTNX, 789 F.3d at 1312. 

We thus hold that 35 U.S.C. § 314(d) prohibits this 

court from reviewing the Board’s determination to initiate 

IPR proceedings based on its assessment of the time-bar

of § 315(b), even if such assessment is reconsidered during 

the merits phase of proceedings and restated as part of 

the Board’s final written decision. 

Still, “even when the statutory language bars judicial 

review, courts have recognized that an implicit and narrow exception to the bar on judicial review exists for 

claims that the agency exceeded the scope of its delegated 

authority or violated a clear statutory mandate.” Hanauer v. Reich, 82 F.3d 1304, 1307 (4th Cir. 1996); see also

Leedom v. Kyne, 358 U.S. 184 (1958). However, statutory 

interpretation disputes fall outside this exception for ultra 

vires agency action, and “[o]nly the egregious error melds 

the agency’s decision into justiciability.” Am. Airlines, 

Inc. v. Herman, 176 F.3d 283, 293 (5th Cir. 1999) (quoting 

United States v. Feaster, 410 F.2d 1354, 1368 (5th Cir.

1969)); see also Key Med. Supply, Inc. v. Burwell, 764 F.3d 

955, 962 (8th Cir. 2014). Here, although Achates did not 

raise this argument, the Board’s institution decision does 

not violate a clear statutory mandate.

Because we cannot review the Board’s determination 

that Apple’s petitions were not time-barred, we also 

cannot review the Board’s denials of Achates’ motions for 

discovery relating thereto. 

III. CONCLUSION

For the foregoing reasons, the appeals are dismissed. 

DISMISSED
14 ACHATES REFERENCE PUBLISHING v. APPLE INC. 

COSTS

Each of the parties shall bear its own costs.