United States: En Banc Federal Circuit Finds PTAB Time Bar Determinations Appealable

On January 10, the en banc Federal Circuit held in Wi-Fi One, LLC v. Broadcom Corp. that inter partes review time bar determinations under 35 U.S.C. § 315(b) are appealable, and explicitly overruled Achates Reference Publishing, Inc. v. Apple, Inc.'s contrary conclusion.

Wi-Fi's appeal follows Final Written Decisions by the Board in which the Board determined that Wi-Fi had not shown that Broadcom, the IPR petitioner, was in privity with the defendants in a district court action.  In that action, the patent's previous owner had already asserted infringement more than a year before Broadcom filed the IPR petitions, and, therefore, the IPR petitions were not time-barred under § 315(b).  Wi-Fi appealed the Final Written Decisions, arguing that the Federal Circuit should reverse or vacate the Board's time-bar ruling.  The Federal Circuit's original panel decision rejected Wi-Fi's arguments as settled by Achates, which held that 315(b) time-bar rulings are nonappealable.  Wi-Fi petitioned for rehearing en banc.

In the en banc decision, Judge Reyna, writing for the majority and joined by Chief Judge Prost and Judges Newman, Moore, O'Malley, Wallach, Taranto, Chen, and Stoll, explained that there is a "strong presumption" favoring judicial review that will be abdicated only when "Congress provides a 'clear and convincing' indication that it intends to prohibit review."  Slip op. at 15.  Viewing the statutory language of the America Invents Act, the legislative history, and the statutory scheme as a whole, the court found no clear and convincing indication.  In addition, the court found the natural reading of the statutory language of § 314(d), which provides that "[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable," limits the reach of § 314(d) to the determination as set forth in § 314.  Id. at 15-16.  In other words, it is limited to "determinations that are focused on the patentability merits of particular claims."  Id. at 16.  In contrast, the court found that the 315(b) time bar is unrelated to the "Director's preliminary patentability assessment or the Director's discretion not to initiate an IPR."  Id. at 17. 

The majority further stated that this reading of the overall statutory scheme is consistent with the directive laid out in the Supreme Court's Cuozzo Speed Tech. LLC v. Lee decision, which stated that § 314(d) bars judicial review when "a patent holder merely challenged the Patent Office's determin[ation] that the information presented in the petition . . . shows that there is a reasonable likelihood of success with respect to at least 1 of the claims challenged" or when "a patent holder grounds its claim in a statute closely related to that decision to institute."  Id. at 18. 

The majority found that whether a petitioner complied with § 315(b) is not such a determination nor is § 315(b) "closely related" to the institution decision addressed in § 314(a).  Id. at 19-20.  The court, therefore, held that time-bar determinations under § 315(b) are reviewable on appeal, breaking from the court's prior practice and overruling Achates.

Judge O'Malley filed a separate concurrence because in her view "the issue presented for en banc rehearing 'is much simpler than the majority's analysis implies."  Slip op. at 3 (O'Malley, J., concurring).  Section 315(b)'s time bar "has nothing to do with the substantive adequacy of the petition and is directed, instead, to the Director's authority to act."  Id.  Specifically, it "places a limit on the PTO's authority to institute IPRs that is based on a comparison of two or more dates" and is an "important procedural right" provided to patent owners by Congress.  Id. at 6.  Therefore, she states that "allowing judicial review of erroneous determinations by the PTO as to whether the § 315(b) time bar applies would prevent the agency from 'acting outside its statutory limits,'" which falls within the "shenanigans" category envisioned by the majority in CuozzoId. at 7.

In the dissent, Judge Hughes, joined by Judges Lourie, Bryson, and Dyk, disagreed with the narrow reading of the statute, arguing that the plain language of § 314(d) bars judicial review of the Director's decision to institute and, "absent persuasive indications to the contrary," Congress "says what it means and means what it says."  Slip op. at 4 (Hughes, J., dissenting).  The dissent also contends that the majority decision is contrary to Cuozzo, which confirms that § 314(d) is not limited to the merits of the petition but also bars review of petition timeliness. 

While the Wi-Fi One decision is confined to the reviewability of the time bar under § 315(b), some believe that its rationale may extend to the reviewability of other issues.  It remains to be seen how far the court will extend its reasoning, if at all, but we will keep you updated here on the AIA Blog when the court issues significant decisions.

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