The US Court of Appeals for the Federal Circuit Monday found that Apple can proceed with a  lawsuit against the US Patent and Trademark Office (PTO) to challenge a set of instructions given by the PTO Director to the Patent Trial and Appeal Board about patentability reviews.

Apple, Cisco, Google, and Intel filed a lawsuit against PTO Director Andrei Iancu for giving the Trial and Appeal Board a set of instructions, called the NHK-Fintiv rule, that could limit when companies can be given inter partes reviews (IPR). These reviews determine whether an invention can be patented. Apple and the other plaintiffs were “repeatedly sued for patent infringement” and thus had an interest in receiving IPRs.

The plaintiffs argued that “(1) that the Director acted contrary to [5 U.S.C. § 706(2)(C)]; (2) that the Fintiv instructions are arbitrary and capricious; and (3) that the Fintiv instructions were issued without compliance with the notice and comment rulemaking requirements of 5 U.S.C. § 553.”

The district court dismissed the case finding that “the Director’s instructions were made unreviewable by the IPR provisions of the patent statute.”

The Appeals Court reversed in part and affirmed in part the district court’s decision. While the court dismissed Apple’s claim that the instructions were arbitrary and capricious, it held that “Apple has standing to press the claim that the challenged instructions were improperly put in place without notice-and-comment rule making.” It also ruled that “at least” Apple had standing to bring the suit.

In the opinion written by Judge Richard G. Taranto the court stated:

We affirm the unreviewability dismissal of plaintiffs’ challenges to the instructions as being contrary to statute and arbitrary and capricious. No constitutional challenges are presented. But we reverse the unreviewability dismissal of plaintiffs’ challenge to the instructions as having been improperly issued because they had to be, but were not, promulgated through notice-and-comment rulemaking under 5 U.S.C. § 553. That challenge, we also hold, at least Apple had standing to present. We remand for further proceedings on the lone surviving challenge.

The case will now be remanded to the district court for further proceedings.