On January 8, 2018, in Wi-Fi One, LLC v. Broadcom Corp., the Federal Circuit rendered an en banc decision holding that the PTAB's determination that a petition for inter partes review was timely filed is subject to judicial review.
The AIA provides that an inter partes review of a patent "may not be instituted" if the petition requesting it was filed more than one year after the petitioner (or a real party in interest or privy of the petitioner) was served with a complaint alleging infringement of the same patent.1 The statute also provides that the PTO's decision on whether to institute IPR is "final and nonappealable."2 The Federal Circuit had previously ruled in a panel decision that whether a petition was filed within the one-year bar is part of the institution decision and not subject to judicial review, even on appeal from the final judgment in the IPR.3
Subsequently, the Supreme Court decided Cuozzo Speed Technologies, LLC v. Lee, in which the Court addressed the availability of judicial review of the PTO's determination that a petition for IPR had stated its grounds "with particularity" as required by statute.4 The Court held that this determination was part of the decision to institute the IPR and, therefore, unreviewable. The Court did not hold that every portion of an institution decision was unreviewable; rather, it held that unreviewability applies "where the grounds for attacking the decision to institute inter partes review consist 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."5
After the Supreme Court issued this limited holding, the Federal Circuit granted en banc reconsideration of its precedent, and ultimately held that the PTO's determination that a petition was filed within the one-year time limit is subject to judicial review.6 The court recognized the "strong presumption" in favor of judicial review and distinguished decisions closely related to the PTO's preliminary evaluation of the petition itself (including whether the petition demonstrates a reasonable likelihood that the petitioner will prevail), from the one-year time bar, which (per the Court) represents a statutory limit on the PTO's authority to act.7
This holding introduces a greater degree of risk for petitioners when the one-year time bar is not clearly satisfied—for example, when an arguable real-party-in-interest was served outside the time limit. Now, it is possible that, even after a thorough and successful inter partes review proceeding, the PTO's final decision will be "unwound" due to a "minor statutory technicality related to [the PTO's] decision to institute inter partes review."8 Parties should account for this risk when considering whether to file a petition in the first place.
Footnotes
1 35 U.S.C. § 315(b).
2 35 U.S.C. § 314(d).
3 Achates Reference Publ'g, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015).
4 136 S. Ct. 2131, 2139 (2016) (citing 35 U.S.C. § 312(a)(3)).
5 Id. at 2141.
6 Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1944, slip op. at 6 (Fed. Cir. Jan. 8, 2018) (en banc).
7 See id. at 15–17.
8 Id., dissenting slip op. at 11–12 (citing Cuozzo, 136 S. Ct. at 2139–40).
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