Patent Owners Now Can Appeal Time-Bar Decisions (No Shenanigans Required)

Published January 9, 2018

On January 8, 2018, the en banc Federal Circuit in Wi-Fi One v. Broadcom (Wi-Fi II), reversed its September 2016 panel decision in Wi-Fi I, opening the door for appellate review of Section 315(b) time-bar decisions in IPR proceedings.

Previously, patent owners had no recourse if they were dissatisfied with the PTAB’s application of the Section 315(b) time bar. That issue was simply not appealable in view of the Federal Circuit’s decisions in Achates and Wi-Fi I, which held:

[Section 314(d)] prohibits this court from reviewing the Board’s determination to initiate IPR proceedings based on its assessment of the time bar of § 315(b), even if such assessment is reconsidered during the merits phase of proceedings and restated as part of the Board’s final written decision.

Although the Supreme Court’s decision in Cuozzo left open the possibility that certain “shenanigans” (e.g., notice failures that create due process problems) might be reviewable, the Federal Circuit’s decisions in Achates and Wi-Fi I had closed the door on the appeal of time-bar decisions.

Wi-Fi II has reopened that door.

The 9-4 en banc decision was written by Circuit Judge Reyna (a dissenting judge in Wi-Fi I) and relies heavily on the “strong presumption in favor of judicial review of agency actions” to overrule the contrary conclusion in Achates and reverse the decision in Wi-Fi I.

The majority found that Section 314(d) does not rebut the strong presumption in favor of judicial review because it only limits appeals “under this section,” which refers to the threshold determinations of patentability under Section 314(a). Since the time-bar provision of Section 315(b) is not part of Section 314, and is not “closely related” to the institution decision addressed in Section 314(a), the majority found that time-bar decisions are not subject to Section 314(d)’s bar on judicial review.

The specific statutory language (with relevant sections highlighted) states:

(a) 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.

(d) No Appeal.—

The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.

Although the full effect of this decision remains to be seen, patent owners can now appeal adverse decisions on the time-bar provisions of 315(b), including related issues such as whether or not a party is a real party-in-interest or privy. The reasoning of Wi-Fi II should apply to equally to petitioners, opening the door for petitioners to appeal adverse Section 315(b) decisions at the institution stage or later.

Posted on 1/9/2018 by Deakin Lauer