In a November 17, 2016 non-precedential decision, a Federal Circuit panel again considered whether its holding in Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) remains binding in view of the Supreme Court’s ruling in Cuozzo Speed Technologies LLC v. Lee, 136 S.Ct. 2131 (2016). See, Click-to-Call Technologies, LP v. Oracle Corporation, et al., No. 2015-1242 (Fed. Cir. Nov. 17, 2016). The Achates decision holds that a party cannot challenge the Board’s decision to institute an IPR proceeding under §315(b) because of the bar on judicial review of institution decisions in §314(d). The Click-to-Call court agreed that the Federal Circuit remains bound by its holding in Achates. But Judge’s O’Malley and Taranto both filed concurring opinions urging the Federal Circuit to reconsider the holding of Achates en banc.

The IPR timeliness provision, §315(b), states: “An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Click-to-Call argued on appeal that the Board wrongly instituted inter partes review because Oracle should have been time-barred under §315(b). But the Federal Circuit, following its ruling in Achates, determined that it did not have jurisdiction to review the Board’s decision.

On remand from the Supreme Court, Click-to-Call argued that Cuozzo requires the Federal Circuit to reconsider its holding in Achates because Cuozzo limits §314(d) to challenges that are “closely related” to the Board’s substnative patentability determination under §314(a). According to Click-to-Call, the Supreme Court implicitly overruled Achates because the time bar under §315(b) is not closely related to the Board’s decision to institute under §314(a).

The Federal Circuit recently determined, in Wi-Fi One, LLC v. Broadcom Corp., No. 15-1944 (Fed. Cir. Sept. 16, 2016), that the Supreme Court’s decision in Cuozzo did not overrule its previous decision in Achates. Bound by the precedent of Wi-Fi and Achates regarding the scope of §314(d), the Federal Circuit dismissed Click-to-Call’s appeal for lack of jurisdiction. The concurring opinions of Judges O’Malley and Taranto, however, noted that the en banc court would not be bound by Achates and should consider the issue afresh in light of Cuozzo.

In view of the concurring opinions in Click-to-Call and the recurrence of this issue, practitioners should not be surprised if the appealability of the Board’s decision to institute an IPR under §315(b) is soon reconsidered by the full Federal Circuit.