35 U.S.C. § 314(d) Archives

Direct injection fuel dispute fizzles

by Lisette Donewald | Jan 8, 2026 | Patents

The US Court of Appeals for the Federal Circuit affirmed three Patent Trial & Appeal Board final written decisions finding claims of three related patents unpatentable as obvious and reiterated that challenges to the Board’s authority to institute inter partes review (IPR) proceedings are largely insulated from appellate review under 35 U.S.C. § 314(d). Ethanol Boosting Systems, LLC, et al. v. Ford Motor Co., Case Nos. 2024-1381; -1382; -1383 (Fed. Cir. Dec. 23, 2025) (Chen, Clevenger, Hughes, JJ.)

Massachusetts Institute of Technology (MIT) owns three related patents directed to fuel management systems for spark-ignition engines, which it exclusively licensed to Ethanol Boosting Systems (EBS). The patents disclose systems using both port fuel injection and direct injection to suppress engine knock by injecting an anti-knock agent, with increasing use of direct injection at higher torque levels.

EBS sued Ford for patent infringement. During claim construction, EBS and Ford disputed the meaning of claim terms related to “direct injection” fuel. EBS proposed the plain and ordinary meaning and no constraints on the term. Ford proposed terms requiring a fuel that is different from fuel used in port injunction systems and contains an anti-knock agent other than gasoline. While claim construction was pending, Ford filed IPR petitions using EBS’s proposed claim construction.

While Ford’s IPR petitions were pending, the district court adopted Ford’s construction and entered summary judgment of noninfringement. EBS appealed, and the Federal Circuit vacated and remanded the district court’s decision. Before the Federal Circuit had decided the appeal, the Board denied institution on all three IPR petitions primarily because it, like the district court, construed the direct injection fuel terms to require fuel different from the fuel used in the port injector. After the Federal Circuit decision, the Board granted rehearing, instituted IPRs, and ultimately found the challenged claims unpatentable as obvious. EBS appealed the Board’s final written decisions.

Institution challenge barred under § 314(d)

EBS argued that the Board acted unlawfully by effectively “staying” its decision on Ford’s rehearing request for more than a year while awaiting the Federal Circuit’s ruling on the district court appeal, and that the resulting institution decisions should therefore be vacated.

The Federal Circuit rejected this argument, finding that it was, in substance, an impermissible challenge to the Board’s institution determinations. The Court explained that § 314(d) bars appellate review not only of institution decisions themselves, but also of challenges “closely related” to those determinations. Characterizing the Board’s delay as an ultra vires “stay” did not change the analysis, particularly since no statutory deadline governed the timing of rehearing decisions and no IPR had yet been instituted.

The Federal Circuit further noted that the narrow exceptions to § 314(d), such as colorable constitutional claims, did not apply because EBS failed to raise a viable due process or other constitutional argument.

Claim construction: District court rulings don’t control

EBS next argued that the Board was bound by the district court’s earlier claim construction (applied during the prior Federal Circuit appeal) requiring a non-gasoline anti-knock [...]

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Time Bar Dismissal Saves Patent Found Unpatentable

by Bhanu K. Sadasivan, PhD | May 26, 2022 | Patents

The US Court of Appeals for the Federal Circuit dismissed an appeal, finding it lacked appellate jurisdiction to review a Patent Trial & Appeal Board (Board) decision to vacate an institution decision of inter partes review (IPR) based in part on the Board’s time bar evaluation. Atlanta Gas Light Co. v. Bennet Regulator Guards, Inc., Case No. 21-1759, (Fed. Cir., May 13, 2022) (Lourie, Stoll, JJ.) (Newman, J. dissenting)

This is the third time this case has been before the Federal Circuit. On July 18, 2012, Bennett served Atlanta Gas with a complaint alleging infringement of its patent. The district court dismissed the complaint without prejudice. More than two and a half years after service of the complaint, Atlanta Gas filed an IPR petition. Bennett argued that Atlanta Gas’s IPR petition was time barred, but the Board disagreed, instituted review of all claims and found every claim unpatentable in a final written decision. After receiving the final decision, Bennett sought sanctions for Atlanta Gas’s failure to notify the Board of Atlanta Gas’s changed parentage. On appeal, the Federal Circuit vacated the Board’s final written decision, finding the IPR time barred under 35 U.S.C. §315(b). (Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co.). The Supreme Court thereafter issued its decision in Thryv, Inc. v. Click-To-Call Tech, where it held that time bar determinations are not reviewable. On remand from the Supreme Court, the Federal Circuit affirmed the Board’s unpatentability decision, did not address the time bar decision and remanded the case back to the Board to finalize its order on sanctions (Bennett II). On remand, the Board vacated its institution decision in light of the US Patent & Trademark Office’s (PTO) changed policy on time bar evaluations and declined to award the requested sanctions. Atlanta Gas appealed.

The Federal Circuit dismissed the appeal for lack of jurisdiction. Atlanta Gas argued that the Board’s decision was a final sanctions decision that is reviewable under 28 U.S.C. § 1295(a)(4)(A) and that any portion of the Board’s determination beyond the sanctions award violated the Court’s mandate in Bennett II. Bennett countered that the Court lacked jurisdiction under 35 U.S.C. § 314(d) and the Supreme Court’s Thryv decision and that the Board’s decision was not inconsistent with the Bennett II mandate. The Court agreed, concluding that it lacked jurisdiction because the Board’s decision was based in part on its time bar evaluation and, therefore, was not purely a sanctions decision. Additionally, the Court found that the time bar determination was within the scope of the mandate, albeit mooting its determination of unpatentability.

Judge Newman dissented. In her view, the sanctions order was the only issue on appeal. She also pointed out the inconsistency with the Bennett II mandate, noting the contradiction in the Federal Circuit currently mooting the unpatentability decision with the Bennett II decision finding the patent unpatentable. She explained that denial of appellate review could be seen as authorizing the Board to vacate its final decisions [...]

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Federal Circuit: Contractual Arbitration Agreements Don’t Bind PTAB Institution Decisions

by Paul Devinsky | Sep 16, 2021 | Patents

The US Court of Appeals for the Federal Circuit issued an order declining to intervene in inter partes review (IPR) institution decisions by the Patent Trial & Appeal Board (PTAB) and further denied a writ of mandamus to stay the PTAB’s IPR institution pending contractually required arbitration of the dispute between MaxPower and ROHM Japan. In re: MAXPOWER SEMICONDUCTOR, INC., Case No. 21-146 (Fed. Cir. Sept. 8, 2021) (Reyna, J.) (O’Malley, J., concurring in part and dissenting in part).

MaxPower owned patents directed to silicon transistor technology and licensed the patents to ROHM Japan. The license agreement contained an arbitration clause that applied to any disputes arising from or related to it—including patent validity. A dispute arose between the parties as to whether the patents covered certain silicon carbide transistor ROHM products. After MaxPower notified ROHM that it was initiating arbitration under the terms of their license agreement, ROHM challenged the validity of four MaxPower patents at the PTAB, which granted ROHM’s petitions to institute IPRs for the four challenged patents.

MaxPower appealed the PTAB’s institution decision to the Federal Circuit and sought a writ of mandamus to stay or terminate the IPR proceedings without prejudice to later institution if an arbitrator decided that IPR proceedings were appropriate.

The Federal Circuit held that the PTAB’s decision to institute IPR is non-appealable under 35 U.S.C. §314(d), which plainly “confirms the unavailability of jurisdiction” for the Court to hear direct appeals. The Court also found that MaxPower failed to meet the criteria necessary to invoke the collateral order doctrine, which allows appeals from interlocutory rulings if they decide an issue “separate from the merits of the case” that would not be reviewable after final judgment. The Court noted that MaxPower could still raise its arbitration-related challenges after the PTAB issued its final written decisions in these cases.

The Federal Circuit also rejected arguments that the appeals were authorized under 9 U.S.C. § 16(a)(1) and that MaxPower failed to show that its mandamus petition was not “merely a ‘means of avoiding the statutory prohibition on appellate review of agency institution decisions,’” citing the Court’s 2018 decision in In re Power Integrations.

Since the PTAB is not bound by private contracts enforcing arbitration agreements between parties, the Federal Circuit ruled that MaxPower had failed to show that the PTAB’s institution decisions in this case “clearly and indisputably exceeded its authority,” also stating that 35 U.S.C. § 294 does not authorize the PTAB to enforce private arbitration agreements.

In a partial dissent, Judge Kathleen O’Malley argued that the majority decision casts “a shadow over all agreements to arbitrate patent validity” and goes against strong federal policy in favor of enforcing arbitration agreements. While concurring with the majority that the PTAB’s IPR institution decisions are not appealable, Judge O’Malley stated that the case “provides exactly the sort of extraordinary circumstances under which mandamus review is appropriate” in what she called an important issue of first impression. The Supreme Court of the United States has held that [...]

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