United States: PTAB's Time Bar Determinations Are Reviewable By The Federal Circuit

Last Updated: January 15 2018
Article by Sandip H. Patel

In Wi-Fi One, LLC v. Broadcom Corporation, an en banc panel of the Federal Circuit decided on January 8, 2018, that the PTAB's application of the 35 U.S.C § 315(b) time bar to institution of inter partes review (IPR) proceedings is reviewable on appeal. The decision overrules Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015), which held to the contrary. The decision is important because, in the context of an appeal of a PTAB final written decision, patent owners may now raise the issue of whether an IPR was improperly instituted due to the § 315(b) time bar.

What is this Case About?

We previously explained the pertinent facts here. In short, the patent owner (Wi-Fi One, LLC) argued that the IPR petitioner (Broadcom Corporation) was in privity with entities accused (and eventually adjudged) in parallel district court litigation of infringing the challenged patent. Those entities, the patent owner argued, would have been time-barred from seeking IPR under section 315(b). The patent owner argued that the petitioner, alleged to be in privity with those litigants, is similarly barred. In December of 2013, the patent owner unsuccessfully sought discovery to prove the petitioner's privity with the time-barred district court litigants. Thereafter the patent owner unsuccessfully petitioned a motions panel of the Federal Circuit for mandamus relief. Discovery denied, the PTAB eventually issued a final written decision canceling the claims of the challenged patent. On appeal, in 2016, a three-judge merits panel of the court affirmed the PTAB's judgment, refusing to review the patent owner's time-bar challenge as foreclosed by Achates. Wi-Fi One, LLC v. Broadcom Corp., 837 F.3d 1329, 1333 (Fed. Cir. 2016). The en banc court vacated this panel decision when it granted the patent owner's petition for rehearing, 851 F.3d 1241 (Fed. Cir. 2017) (en banc order (discussed here)).

What did the Federal Circuit Say?

A nine-judge majority of the en banc court held that the PTAB's time-bar determinations are appealable, and the court therefore "remand[ed] for the [original three-judge] panel to consider in the first instance the merits of [the] time-bar appeal." Slip Op. at 21. In arriving at this decision, the majority found no indication in the statutory language or legislative history that Congress intended to bar judicial review of the PTAB's time-bar determinations. Id. at 15. Further, the majority found nothing in the Supreme Court's decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), foreclosing this type of review. Slip Op. at 18–19. To the majority, "[e]nforcing statutory limits on an agency's authority to act is precisely the type of issue that courts have historically reviewed," and the "time bar is such an issue." Id. at 20–21 (citing cases).

One circuit judge wrote a concurrence to emphasize the PTAB's time-bar determinations are not discretionary and therefore immune from judicial review, but instead concern the authority to undertake the review in the first instance. Judicial review of the PTAB's time-bar determinations would, according to this judge, "prevent the agency from '[a]cting outside its statutory limits,' one of the categories of 'shenanigans' envisioned by the majority in Cuozzo." Concurring Slip Op. at 7 (quoting Cuozzo, 136 S. Ct. at 2141–42).

Four judges dissented, taking the view that, under the Supreme Court's Cuozzo decision, 35 U.S.C. § 314(d) bars judicial review of the PTAB's time-bar determinations because the statute prohibits judicial review of "'questions that are closely tied to the application and interpretation of statutes related to the Patent Office's decision to initiate inter partes review.'" Dissenting Slip Op. at 4–5 (citing Cuozzo, 136 S. Ct. at 2139).

The differences between the four-judge dissent and the nine-judge majority could hardly be more clear. The dissent considers the § 315(b) time bar to be a statute related to the Patent Office's decision to initiate inter partes review, whereas the majority does not. The dissent believes the statutory scheme clearly bars judicial review, whereas the majority believes the statute is reasonably susceptible to an interpretation permitting judicial review. The dissent believes "Congress's intent to prohibit judicial review is clear and unmistakable," whereas the majority is not aware of "any specific legislative history that clearly and convincingly indicates congressional intent to bar [such] review." And both the dissent and the majority believe Cuozzo supports their views!

Was the Majority's Decision Correct?

While the Supreme Court's Cuozzo decision was pending, another patent owner, Click-to-Call Technologies, had already petitioned the Supreme Court to review the Federal Circuit's 2015 dismissal of its appeal of a PTAB final written decision where the PTAB decided the statutory time bar did not apply. Click-to-Call Techs., LP v. Oracle Corp., 622 F. App'x 907 (Fed. Cir. 2015) (per curiam). A week after its Cuozzo decision, the Supreme Court granted Click-to-Call's petition, vacated the Federal Circuit's dismissal, and remanded the case for the Federal Circuit's reconsideration in view of Cuozzo. Click-to-Call Techs., LP v. Oracle Corp., 136 S. Ct. 2508 (Mem) (2016). We discussed the Click-to-Call case here and here. In granting the petition and vacating the Federal Circuit's dismissal, the Supreme Court may have signaled judicial review is proper. But to ensure years of confusion, the Court instructed the Federal Circuit to interpret the Cuozzo decision instead of simply deciding the Click-to-Call case on its merits. Part of the confusion lies in how to determine what constitutes appealable "shenanigans" rather than something closely related to the institution decision under § 314. The Cuozzo decision cannot be sufficiently clear if there is a 9-4 split at the Federal Circuit. Perhaps, if asked (again), the Supreme Court will tell us if the majority in Wi-Fi One is correct.

What's Next?

So here we are four years after Wi-Fi One unsuccessfully moved the PTAB for discovery that may prove Broadcom's privity with the time-barred district court litigants and therefore establish that the PTAB lacks authority, under section 315(b), to administer inter partes review. Absent Supreme Court review, the appeal will return to the merits panel. That panel may well remand the matter to the PTAB, which in turn may permit discovery. Resolution of the particular dispute between the Wi-Fi One litigants seems far from over. And the same renewed path may await the Click-to-Call litigants if the Federal Circuit grants the patent owner's petition for rehearing long pending in that appeal. Current and prospective AIA trial participants should expect a more conscientious PTAB whenever issues arise relating to statutory limits on its authority to act, and a PTAB that takes even more care in articulating reasoning supporting its decisions on those issues.

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.

Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
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
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
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.


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