Court Questions Reasoning in Achates Publishing

Today, in Click-To-Call Techs. v. Oracle Corp., (here) the Federal Circuit reconsidered its earlier decision (GVR Order) in light of the 35 U.S.C. § 314(d) discussion in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016). In its earlier Click-to-Call decision, the Court found that issues arising under 35 U.S.C. § 315(b) (i.e,, one year time bar) could not be appealed, pursuant to 314(d). In today's non-precedential decision, the Court found that it could not reverse its earlier ruling since it was bound by its own precedent to the contrary.

However, the viability of the precedent was called into serious question.

In the per curiam portion of the court’s opinion, it was explained that Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) bound the Court to its original determination that dismissed Click-To-Call’s 315(b) argument based on a lack of appellate jurisdiction. (Achates established, prior to Cuozzo, that a party cannot challenge the Board’s decision to institute an IPR proceeding under § 315(b) because it is barred under § 314(d)). The Court had earlier determined that Achates was not overruled by Cuozzo. (Wi-Fi One, LLC v. Broadcom Corp., (Fed. Cir. Sept. 16, 2016)).

In concurring opinions, Judges O’Malley and Taranto agreed that they must dismiss Click-To-Call’s appeal because they are bound by the court’s precedent in Wi-Fi One and Achates. However, both judges wrote separately to explain why they believe that the full Federal Circuit sitting en banc should review the court’s reasoning in Achates in light of Cuozzo.

Judge Taranto emphasized jurisdictional issues under the Administrative Procedure Act (APA) as compared to matters of patentability:

314(d). . .refers to a “determination . . .whether to institute an IPR under this section” (emphasis added). As a textual matter, those words clearly encompass the “reasonable likelihood” determination specified in § 314(a), but they leave unclear to what extent they reach determinations of compliance with other statutory provisions bearing on institution. The interpretive task demands a wider focus, beyond the words of § 314(d) alone, as the Court’s analysis in Cuozzo itself shows. . . ..regulations treat compliance with the timing rule for IPRs as a matter of Board “jurisdiction.” 37 C.F.R. § 42.3(b) (in section headed “Jurisdiction,” providing that “[a] petition to institute a trial must be filed with the Board consistent with any time period required by statute”) . . . . The “jurisdiction” label, while a troublesome one in many contexts, here relates to an Administrative Procedure Act principle that the Court in Cuozzo invoked in stating that, at least sometimes and maybe generally, § 314(d) does not bar review to determine if agency action is “‘in excess of statutory jurisdiction.’”
. . . . . The Supreme Court could easily have written its opinion more broadly. Instead, it took evident pains to speak in terms that left a good deal open. And then, rather than conclude that Cuozzo so clearly implies unreviewability of § 315(b) determinations that the Court should simply deny the petition for certiorari in the present case, the Court granted certiorari, vacated our judgment finding unreviewability, and remanded the case for further consideration