The Federal Circuit has found that it may not review a PTAB determination that an IPR petition was timely-filed within 35 U.S.C. § 315(b)'s 1-year bar. Achates Reference Publishing Inc. v Apple Inc., 803 F.3d 652 (Fed. Cir. 2015). The law may soon change, as the Federal Circuit recently granted Wi-Fi One's petition for rehearing en banc of its September decision that it may not review the PTAB's finding that Broadcom's IPR petitions were not time-barred. Wi-Fi One, LLC v. Broadcom Corp., Nos. 2015-1944, -1945, -1946 (Jan. 4, 2017).
In the September decision, the panel found that review was precluded by Achates. "In Achates . . . , we held that section 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.'" Slip op. at 6 (Sep. 16, 2016).
In the en banc review, the parties' supplemental briefs are limited to the question of whether the Federal Circuit should "overrule Achates . . . and hold that judicial review is available for a patent owner to challenge the PTO's determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review." Slip op. at 2 (Jan. 4, 2017). The court set the following briefing schedule:
| Wi-Fi One's supplemental brief | Monday, February 13, 2017 |
| Amicus briefs supporting Wi-fi One or neither party | Thursday, February 23, 2017 |
| Broadcom's supplemental brief | Wednesday, March 15, 2017 |
| Amicus briefs supporting Broadcom | Monday, March 27, 2017 |
| Wi-Fi One's reply brief | Wednesday, March 29, 2017 |
This is an important case to watch because the resulting decision may further clarify the scope of the Federal Circuit's appellate review jurisdiction. While the case addresses 315(b) in particular, some believe it will affect the reviewability of other issues as well. We will continue to monitor the case and provided updates here on the AIA Blog as it progresses.
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