United States: Federal Circuit Reverses Course, Ruling Time-Bar Defense To Inter Partes Review Is Appealable

The US Court of Appeals for the Federal Circuit (the Court), sitting en banc, ruled on Monday, January 8, 2018, that a determination by the Patent Trial and Appeal Board (PTAB) as to whether a petition for inter partes review (IPR) is time-barred under 35 USC Section 315(b)i is subject to judicial review.ii In doing so, the full Court overruled a prior decision by a three-judge Federal Circuit panel that such determinations could not be appealed.iii

Patent owner Wi-Fi One LLC had argued before the PTAB that Broadcom Corp.'s IPR petitions were time-barred under 35 USC Section 315(b) because Broadcom's privies were served with an infringement complaint more than one year before Broadcom filed its petitions. The PTAB, however, denied Wi-Fi One's request for discovery concerning privity, instituted Broadcom's requested IPRs and, ultimately, found no violation of the time bar. In its final written decision, the PTAB maintained that Wi-Fi One had not established that the prior defendants were in privity with Broadcom and thus the petitions were not time-barred. Wi-Fi One appealed, and a three-judge panel of the Court affirmed the PTAB, citing a previous ruling by the Federal Circuit in Achates which held that time-bar determinations under section 315(b) are nonappealable. 

WiFi One petitioned for a rehearing en banc to determine whether Achates should be overruled and the Patent Office's section 315(b) time-bar determinations are subject to judicial review. The full Court granted Wi-Fi One's petition. The resulting nine-judge majority opinion framed the issue as whether the "strong presumption" favoring judicial review of administrative actions was overcome by a "clear and convincing indication" that Congress intended to prohibit review, as set forth in the statutory language, legislative history or statutory scheme of the America Invents Act (AIA). Finding no "clear and convincing indication" of such intent, the majority ruled in favor of judicial review of time-bar determinations.

The statutory provision in question, 35 USC Section 314, is reproduced below (emphasis added):

  1. Threshold. — The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.
  2. Timing. — The Director shall determine whether to institute an inter partes review under this chapter pursuant to a petition filed under section 311 within 3 months after—

    1. receiving a preliminary response to the petition under section 313; or
    2. if no such preliminary response is filed, the last date on which such response may be filed.
  3. Notice. — The Director shall notify the petitioner and patent owner, in writing, of the Director's determination under subsection (a), and shall make such notice available to the public as soon as is practicable. Such notice shall include the date on which the review shall commence.
  4. No Appeal. — The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.

The majority focused heavily on the statutory language "under this section" of section 314(d). The majority found that this "no appeal" provision was limited to the type of threshold determinations on the merits specified by section 314(a), and thus was not applicable to time-bar determinations made under section 315(b).iv 

The majority also considered the AIA's overall statutory scheme, and found support for its interpretation thereof in the Supreme Court's analysis of section 314(d) in the Cuozzo decision.v The majority, citing Cuozzo, argued that the Supreme Court's interpretation of section 314(d) barred appeal of the USPTO director's determinations regarding the sufficiency of information presented in the petitionvi because those decisions are "closely related to the preliminary patentability determination or the exercise of discretion not to institute under § 314(a)."vii Time-bar decisions made under section 315, in contrast, are "fundamentally different" from section 314 determinations because they are not closely tied to the reasonable likelihood of demonstrating unpatentability of at least one claim. Thus, time-bar decisions are not subject to the "no appeal" provision of section 314(d), the Court reasoned.viii

The majority explicitly limited its holding to the appealability of time-bar determinations pursuant to section 315(b), and refused to rule whether all disputes arising from sections 311–14 are final and nonappealable. Thus, future appeals further probing the scope of appealability of AIA-trial institution decisions seem likely.

In a concurring opinion, Judge Kathleen O'Malley argued that the section 314(d) bar on appellate review is limited to the USPTO's assessment of the substantive adequacy of the petition. Because section 315(b)'s time bar is not related to this determination, the "no appeal" provision is inapplicable, in her opinion.ix

Four Federal Circuit judges joined in a dissenting opinion. The dissent criticized the majority for an overly narrow interpretation of both the statutory provisions and the Cuozzo decision. In the dissent's view, the phrase "under this section" in section 314(d) simply refers to the fact that inter partes review is instituted pursuant to section 314, and is not intended to limit the applicability of the broadly worded ban on appeals in section 314(d).x Furthermore, the dissent read Cuozzo to hold that determinations made under a "different" section—section 312(a)(3)—covered by the ban on appeals, and concluded that section 314(d) is not limited to the "merits of the petition" determinations as alleged by the majority.

This case follows on the heels of the recently decided Aqua Products decision, where the Federal Circuit, en banc, effectively shifted the burden of proof from the patent owner to the petitioner to demonstrate the patentability of amended claims presented during IPR. The Wi-Fi decision, like Aqua Products, is the latest in a number of legal developments that can be characterized as more favorable to patent owners in AIA trials before the PTAB.

Dentons is prepared to defend its clients' interests before the PTAB in light of these and other important developments.


i 35 U.S.C. § 315(d): "An 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 privy of the petitioner is served with a complaint alleging infringement of the patent.  The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c)."

ii Wi-Fi One LLC v. Broadcom Corp., appeal no. 2015-1944 (Fed. Cir. 2018)(en banc).

iii Achates Reference Publishing, Inc. v. Apple, Inc., 803 F.3d 652, 658 (Fed. Cir. 2015).

iv Wi-Fi One, slip op., at 15-17.

vCuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016).

vi 35 U.S.C. § 312 (a)(3): "the petition identifies, in writing and with 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, including . . .."

vii Wi-Fi One, slip op., at 18 (citing,136 S. Ct. at 2142).

viii Id., at 19.

ix Id., O'Malley, concurring at p. 4.

x Id., dissent at p. 8.

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