United States: Federal Circuit Lifts Bar On Judicial Review Of PTAB Time-Bar Determinations

Last Updated: January 12 2018
Article by Dion M. Bregman and Ehsun Forghany

The Federal Circuit recently reversed course and expanded judicial review of PTAB institution decisions to include time-bar determinations, potentially clearing a path for petitioners and patent owners to appeal other threshold determinations.

The US Court of Appeals for the Federal Circuit sitting en banc recently revisited whether the bar on judicial review of institution decisions by the Patent Trial and Appeal Board (PTAB or the Board) applies to time-bar determinations. Overruling a prior panel decision answering in the affirmative, on January 8 the full Federal Circuit held that the PTAB's time-bar determinations are in fact appealable. The ruling provides dissatisfied litigants with new ammunition for challenging institution decisions, and potentially opens the door to appeals on other threshold determinations that do not reach the merits of the inter partes review (IPR) petition.


When Congress passed the Leahy-Smith America Invents Act (AIA) in 2011, it intended for post-grant proceedings, including IPR, to be quick and cost-effective alternatives to district court litigation for challenging the patentability of issued patent claims.[1] To that end, Section 314 of Title 35 limits the judicial review of the Board's institution decision by providing that "[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable."[2] The US Supreme Court made clear in Cuozzo that Section 314(d) bars judicial review of institution decisions concerning compliance with Section 312(a)(3)—i.e., whether the petition identified with sufficient particularity "each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim."[3] The Cuozzo court, however, expressly declined to "decide the precise effect of § 314(d) on appeals that implicate constitutional questions, that depend on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond 'this section.'"[4]

The time-bar provision, Section 315(b) of the AIA, requires the Board to deny institution of an IPR even if the petition otherwise complies with Section 312(a)(3). The provision provides that "[a]n 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 privity of the petitioner is served with a complaint alleging infringement of the patent." This one-year time bar does not apply to requests for joinder under Section 315(c).

Prior to Cuozzo, a Federal Circuit panel determined for the first time whether Section 314(d) precludes judicial review of Section 315(b) time-bar determinations.[5] There, the patent owner appealed a final written decision canceling certain patent claims through IPR, arguing that the Board overstepped its statutory authority by instituting IPR on a petition that was time-barred under Section 315(b).[6] The Federal Circuit panel rejected this argument, holding that "35 U.S.C. § 314(d) prohibits this court from reviewing the Board's determination to initiate IPR proceedings based on [the patent owner's] 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 final written decision."[7] According to the panel, the Board's misinterpretation of Section 315(b) does not constitute ultra vires agency action that might otherwise support judicial review.[8] The panel concluded that it was barred from reviewing Section 315(b) decisions and dismissed the case for lack of personal jurisdiction.

The Decision

In 2013, Broadcom Corporation (Broadcom) filed three separate IPR petitions challenging three patents owned by Wi-Fi One, LLC (Wi-Fi), all of which had been asserted in 2010 in the Eastern District of Texas against multiple defendants, but never against Broadcom itself. In response to Broadcom's petitions, Wi-Fi argued that the Board was prohibited from instituting review on any of the three petitions because Broadcom was in privity with the Eastern District of Texas defendants, and as such, the IPR petitions were time-barred under Section 315(b).

The Board disagreed and instituted IPR on the challenged claims, and issued final written decisions finding the challenged claims unpatentable. In those decisions, the Board determined that Wi-Fi had not shown that Broadcom was in privity with the defendants in the Eastern District of Texas litigation, and, therefore, the IPR petitions were not time-barred under Section 315(b).[9]

Wi-Fi appealed the final written decisions, arguing, among other things, that the Board's time-bar determinations should be reversed. After a panel of the Federal Circuit rejected Wi-Fi's arguments, finding the Section 315(b) time-bar rulings nonappealable, Wi-Fi petitioned for rehearing en banc, and the Federal Circuit granted its petition.

The en banc panel began by finding no "specific legislative history that clearly and convincingly indicates congressional intent to bar judicial review of § 315(b) time-bar determinations."[10] Turning next to the statutory language, the Federal Circuit found that Section 315(b) controls the Board's authority to institute IPR, and as such, is "unrelated" to the noninitiation and preliminary-only merits determinations because it "does not go to the merits of the petition."[11]

The time-bar decision is nowhere referred to in § 314(a). Additionally, the time bar is not focused on the particular claims, whereas § 314(a)'s threshold determination is; the time bar involves only the time of service of a complaint alleging infringement "of the patent." Nothing in § 315(b) sets up a two-stage process for addressing the time bar: the time-bar determination may be decided fully and finally at the institution stage.[12]

Simply put, the time-bar determination "has nothing to do with the patentability merits or discretion not to institute."[13] The Federal Circuit further distinguished Section 315 as "a condition precedent to the Director's authority to act" that "sets limits on the Director's statutory authority to institute," which "is precisely the type of issue that courts have historically reviewed."[14]

For these reasons, the Federal Circuit held that "the statutory scheme as a whole demonstrates that § 315 is not 'closely related' to the institution decision addressed in § 314(a), and is therefore not subject to § 314(d)'s bar on judicial review."[15] The court remanded for the panel to consider in the first instance the merits of Wi-Fi's time-bar appeal.

Future Implications

The Federal Circuit's decision in Wi-Fi clears the way for more PTAB appeals, allowing patent owners and petitioners to immediately appeal time-bar determinations made by the PTAB at the institution stage. Although the en banc panel declined to decide "whether all disputes arising from §§ 311-314 are final and non-appealable,"[16] the decision signals a raised scrutiny of the PTAB's institution decisions.

By carving out an avenue for appealing an institution decision, which was strictly limited in the past, the Wi-Fi court's ruling suggests that the court may in the future permit appeals on other threshold determinations that do not reach the merits of the IPR petition. Such determinations may include whether a petitioner has fulfilled the AIA's requirement of naming all of the interested parties to a petition or is barred by estoppel from filing the petition.


[1] H.R. Rep. No. 112-98, pt. 1, at 48 (2001); 157 Cong. Rec. 2,710 (2011) (statement of Sen. Grassley).

[2] The director has delegated the authority to institute IPR to the PTAB. 37 C.F.R. §§ 42.4(a), 42.108.

[3] Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2139-42 (2016).

[4] Id. at 2141 (emphasis added).

[5] 803 F.3d 652, 658 (Fed. Cir. 2015).

[6] Id. at 653.

[7] Id. at 658.

[8] Id. at 658-59.

[9] Broadcom Corp. v. Wi-Fi One, LLC, No. IPR2013-00601, 2015 WL 1263008, at *4-5 (PTAB Mar. 6, 2015); Broadcom Corp. v. Wi-Fi One, LLC, No. IPR2013-00602, 2015 WL 1263009, at *4 (PTAB Mar. 6, 2015); Broadcom Corp. v. Wi-Fi One, LLC, No. IPR2013-00636, 2015 WL 1263010, at *4 (PTAB Mar. 6, 2015).

[10] Wi-Fi One, LLC v. Broadcom Corp., No. 15-1944, slip op. at 15.

[11] Id. at 17.

[12] Id.

[13] Id.

[14] Id. at 20.

[15] Id.

[16] Id. at 21.

This article is provided as a general informational service and it should not be construed as imparting legal advice on any specific matter.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions