PTAB Lacks Jurisdiction to Collaterally Attack Prior Decision on Petition to Revive

The Board declined to institute inter partes review of an image capturing patent because the asserted basis for unpatentability required the Board to determine that the challenged patent was not entitled to the benefit of a parent application's filing date due to lack of co-pendency and such determination would constitute a collateral attack on an earlier determination by the PTO in a revival action. "Had [the petitioner's] argument been that the parent . . . application does not support the subject matter of the challenged claims . . . [the patent owner] would have to show that the challenged claims are entitled to the earlier effective filing date of the parent . . . application. Here, however, [the petitioner] asserts only lack of co-pendency . . . . Moreover, [the petitioner] asserts lack of co-pendency in a manner that amounts to a collateral attack on a petition decision . . . regarding the status of the parent . . . application. . . . [The petitioner] has not identified proper jurisdiction or authority of the Board either (1) to review and overturn the [decision of the PTO] on the Petition to Revive [the parent application], or (2) to ignore that decision and make our own determination on whether the parent . . . application should have been revived on the basis of 'unintentional' abandonment. . . . Where the issue is the status of an applied reference as prior art, viewed in light of a patent owner’s effort to antedate the date of the reference . . . we can review the evidence submitted to show a date of invention prior to the date of the reference. That issue is substantive and central to the merit of the patentability determination. On the other hand, where the issue is the status of an application as abandoned or revived, the matter is procedural and not central to the substantive merit of a patentability determination. We have jurisdiction to review and determine the former, not the latter. Furthermore, we note also that 'PTO revival actions are not subject to third party challenge under the APA.'"

Petition for Inter Partes Review by Apple Inc., IPR2015-00411 (PTAB May 7, 2015, Order) (Lee, APJ)