United States: Federal Circuit Rules That PTAB Rejection Of IPR Time-Bar Defense Is Reviewable

Last Updated: January 11 2018
Article by Andrew B. Turner

In an en banc decision, the U.S. Court of Appeals for the Federal Circuit ruled that the appeals court may review the Patent Trial and Appeal Board's determination, in connection with a decision to institute inter partes review under 35 U.S.C. § 314, that a petition is not time-barred under 35 U.S.C. §315. The decision overrules the Federal Circuit's decision in Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015). Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1944 (Fed. Cir. Jan. 8, 2018).

Background

The America Invents Act provided that the PTAB's decision to institute post-grant review is not subject to appellate review. See 35 U.S.C. § 314(d) ("The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable."). In the Achates decision, the Federal Circuit held that the prohibition on appeals applies to a patent owner's contention that a petitioner is barred from challenging a patent in an IPR because the petition was filed more than one year after the petitioner or an entity in privity with the petitioner was served with a complaint alleging infringement of the same patent. 35 U.S.C. § 315(b).

In this case, Ericsson filed a complaint against several defendants in 2010, alleging infringement of its patents. Ericsson later assigned the patents to Wi-Fi One, LLC. In 2013, Broadcom Corporation, which was not named as a defendant in the earlier action, filed petitions for inter partes review of the patents. Wi-Fi One argued that Broadcom was in privity with the defendants in the earlier action, and thus the petition was barred under § 315(b). Wi-Fi One filed a motion seeking discovery to support its privity argument, but the PTAB denied the motion, finding that Wi-Fi did not provide sufficient evidence to justify the discovery. After the PTAB denied Wi-Fi One's petition for rehearing, Wi-Fi One petitioned the Federal Circuit for a writ of mandamus, which was also denied. The PTAB proceeded to institute the IPR, without addressing the privity issue in the institution decision. In a final written decision, the PTAB ruled that the challenged claims were unpatentable, and that Wi-Fi One had not proven the Broadcom was in privity with the defendants in the earlier infringement action. Wi-Fi One appealed to the Federal Circuit.

Federal Circuit Applies Cuozzo, Rules that Time-Bar Determination is Appealable

In an initial panel decision, the Federal Circuit applied Achates and ruled that the PTAB's determination that Broadcom's petition was not time-barred was not appealable. Wi-Fi One, LLC v. Broadcom Corp., 837 F.3d 1329 (Fed. Cir. 2016).

Following that decision, however, the Supreme Court decided Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016). In Cuozzo, the Court ruled, among other things, that § 314(d) does not bar all appeals from PTAB institution decisions. In light of that decision, the Federal Circuit granted rehearing en banc to revisit the appealability of the time-bar issue

In a 9-4 decision, the Federal Circuit vacated the panel decision and ruled that Wi-Fi One could appeal the PTAB's ruling that Broadcom's petition was not time-barred. Circuit Judge Reyna, writing for the majority, noted that a strong presumption exists that administrative actions are subject to federal court review under the Administrative Procedures Act. "In view of this strong presumption, we will abdicate judicial review only when Congress provides a 'clear and convincing' indication that it intends to prohibit review." Slip op. at 15, quoting Cuozzo, 136 S. Ct. at 2140.

The Federal Circuit applied Cuozzo, which suggested the limits of § 314(d)'s prohibition on appellate review. The Supreme Court ruled that § 314(d) blocked "mine-run" challenges to institution decisions, based on issues that are "closely related" to the PTAB's preliminary decision that the petitioner has met the standard for initiating review. In contrast, the appeals court noted, the time-bar provision in § 315(b) is unrelated to the question whether a reasonable likelihood exists that the petitioner would prevail on at least one challenged claim. See 35 U.S.C. § 314(a). The Federal Circuit explained:

Whether a petitioner has complied with § 315(b) is not such a determination, as it has nothing to do with the patentability merits or discretion not to institute. The time-bar provision contrasts with many of the preliminary procedural requirements stated in §§ 311–13, which relate to the Director's ability to make an informed preliminary patentability determination pursuant to § 314(a). Specifically, § 315(b) time-bar determinations are fundamentally different from those evaluating the satisfaction of § 312(a)(3)'s requirements, at issue in Cuozzo.

Slip op. at 19.

Since the time-bar issue was not "closely-related" to the decision to institute, the appeals court concluded that an appeal of that issue was not blocked by § 314(d). "Accordingly, our review of the statutory language and the statutory scheme reveals no clear and convincing indication of Congress's intent to bar judicial review of § 315(b) time-bar determinations."

Slip op. at 20.

Circuit Judge Hughes, joined by three other judges, dissented, arguing that § 314(d) was a clear statement of Congress' intent to foreclose all appeals from institution decisions.

Practical Significance

The Wi-Fi One decision creates an opportunity for patent owners to seek review of PTAB institution decisions when the petitioner may be barred from filing an IPR petition due to a prior infringement action. Previously, any determination of the time-bar issue was not appealable.

In addition, the decision may signal the Federal Circuit's willingness to hear appeals based on other issues not directly related to the merits of the IPR petition. In Cuozzo, Justice Breyer noted that appeals may be available when PTAB decisions fail to comport with due process, when the decision goes beyond the "statutory" limits of the AIA, such as when the review is premised on a violation of 35 U.S.C. § 112 (which is not a ground for invalidity available in IPR proceedings), or other judicial "shenanigans." Furthermore, in his dissent in Cuozzo, Justice Alito suggested that issues relating to the PTAB's jurisdiction also may be subject to appeal.

Wi-Fi One likely will lead to additional appeals from IPR decisions, including interlocutory and institution decisions, and the scope of challenges available likely will be explored in future decisions, despite § 314(d).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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.

Authors
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
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must 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.

Disclaimer

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.

General

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