The US Court of Appeals for the Federal Circuit held that appellate review is not permissible for Patent Trial and Appeal Board (PTAB or Board) rulings on time-bar of an inter partes review (IPR) petition under § 315(b) or on assignor estoppel, based on § 314(d) and the Supreme Court of the United States’ recent ruling in Cuozzo Speed Technologies, LLC v. Lee (IP Update, Vol. 19, No. 7). Wi-Fi One, LLC v. Broadcom Corp., Case No. 15-1944 (Fed. Cir., Sept. 16, 2016) (Bryson, J) (Reyna, J, concurring); Husky Injection Molding Systems v. Athena Automation Ltd.,Case Nos. 15-1726; -1727 (Fed. Cir., Sept. 23, 2016) (Lourie, J) (Plager, J, concurring in part and dissenting in part).
In Wi-Fi One, the Federal Circuit reaffirmed its decision in Achates Reference Publishing v. Apple Inc., which stated that § 314(d) prohibits the Court from reviewing the PTAB’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 the proceeding and restated as part of the PTAB’s final written decision (IP Update, Vol. 18, No. 10). The Federal Circuit found that Cuozzo did not implicitly overrule Achates, as the time-bar provision of § 315 does not fall into any of the three categories that were found to be explicitly reviewable in Cuozzo. Specifically, the § 315 time-bar provision does not fall into Cuozzo’s first category because it does not implicate a constitutional concern, such as due process. In addition, the time-bar provision does not fall into Cuozzo’s second or third categories because it is a question that is closely tied to the application and interpretation of a statute that is related to the PTAB’s decision to initiate an IPR proceeding. The Federal Circuit also rejected the argument that Cuozzo limited the rule of preclusion to substantive patentability determinations made at the institution stage. The Federal Circuit therefore concluded that the PTAB’s determination of whether an IPR petition is time-barred under § 315(b) is non-appealable.
Judge Reyna concurred in the decision based on the facts in the Wi-Fi One case but opined that the Federal Circuit’s decision in Achates should be reconsidered en banc. In particular, Reyna believes that a legal distinction exists between an “institution” decision and a final decision. As such, a final decision concerning the time-bar provision of § 315 should be subject to review.
Similarly, in Husky Injection Molding Systems, the Federal Circuit found that the PTAB’s decision on assignor estoppel is non-appealable. The Federal Circuit first considered whether the PTAB’s decision on assignor estoppel falls into any of the three categories that were found to be explicitly reviewable in Cuozzo. Specifically, the Court concluded that assignor estoppel does not fall into Cuozzo’s first category because it does not implicate a constitutional concern, such as due process. Assignor estoppel does not fall into Cuozzo’s second category because it is not derived from a statute and thus cannot depend on other less closely related statutes. Finally, assignor estoppel does not fall into Cuozzo’s third category because it does not present issues that are well beyond the PTAB’s decision to initiate an IPR proceeding. The Federal Circuit then considered whether assignor estoppel relates to the PTAB’s ultimate invalidation authority. The Court found that it did not, because, like the time-bar provision of § 315, the PTAB can still invalidate a claim based on a properly filed petition. The Federal Circuit therefore determined that the PTAB’s decision on assignor estoppel is non-appealable.
Judge Plager dissented in Husky Injection Molding, arguing that decisions regarding assignor estoppel should be reviewable. Plager based his argument on the fact that the assignor estoppel could fall into Cuozzo’s second category because it operates in connection with § 311, which could be considered less closely related to the decision to initiate an IPR proceeding. Alternatively, Plager argued that assignor estoppel could fall into Cuozzo’s third category to the extent it presents questions of interpretation that reach beyond § 314.