The Federal Circuit recently granted a petition for rehearing en banc in Wi-Fi One, LLC v. Broadcom Corp. to address the following question:

Should this Court overrule Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) 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 inter partes review?

This raises the possibility that the Federal Circuit will soon review the PTAB's decisions on real party-in-interest ("RPI") and privity questions, which often drive statutory timeliness disputes.

In Achates Reference Publishing, Inc. v. Apple Inc.,1 Achates unsuccessfully argued to the PTAB that Apple was timebarred as a result of Apple's relationship with another litigation defendant, QuickOffice, who had been sued more than one year before Apple filed its IPR petition. The Federal Circuit dismissed Achates's appeal, holding that the PTAB's decision as to timeliness under Section 315(b) was judicially unreviewable at any time. Specifically, the Federal Circuit stated 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."2

In Wi-Fi One, patent owner Wi-Fi argued unsuccessfully to the PTAB that petitioner Broadcom was time-barred because it was in privity with entities involved in parallel district court litigation on the same patent. On appeal to the Federal Circuit, Wi-Fi acknowledged the Achates decision, but argued that (1) the decision is flawed, and (2) the Supreme Court's Cuozzo decision has implicitly overruled Achates. The Federal Circuit panel rejected Wi-Fi's arguments, reasoning that the Supreme Court had upheld the prohibition against reviewability of "questions that are closely tied to the application and interpretation of statutes related to the USPTO's decision to initiate inter partes review," and that Section 315 was just such a statute.3 Despite the panel's unanimity on this issue, Judge Reyna's concurrence advocated for en banc review of the Achates decision on the ground that it renders Section 315(b) "toothless."4 In suggesting en banc review, Judge Reyna specifically noted that Cuozzo's holding was not intended to "enable the agency to act outside its statutory limits."5

The effects of the Federal Circuit's en banc decision could be significant. Currently, privity and RPI law at the Federal Circuit is under-developed, at least in the context of post-grant proceedings. Privity and RPI law has developed at the PTAB in a way that is petitioner-friendly: the PTAB rarely allows patent owners to take discovery on privity or RPI issues, and has generally rejected arguments that, absent more, members of trade associations, or suppliers and their indemnified customers, are in privity with one another. If the Federal Circuit changes the Achates rule and starts reviewing time-bar decisions under Section 315(b), it could shift the privity and RPI balance away from petitioners, and, in turn, alter petitioner IPR strategy, as well as the calculus of whether and to what extent companies should collaborate in various trade associations and joint defense groups.

Supplemental briefing (including amicus briefing) in the Wi-Fi One, LLC v. Broadcom Corp. case is ongoing. Oral argument is yet to be scheduled.

Footnotes

1.803 F.3d 652 (Fed. Cir. 2015).

2 Id. at 658 (emphasis added).

3 Wi-Fi One, LLC v. Broadcom Corp., 837 F.3d 1329, 1334 (Fed. Cir. 2016).

4 Id. at 1340.

5 Id. at 1341.

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