In WiFi v Broadcom, the Federal Circuit confirmed that the Supreme Court decision in Cuozzo did not overrule the prohibition on appellate review of decisions relating to institution of IPR proceedings. Although Cuozzo left open the possibility that certain “shenanigans” (e.g., notice failures that create due process problems) might be reviewable, the Federal Circuit rejected Wi-Fi’s assertion that the denial of requests for discovery on the time-bar issue falls within that narrow exception.

In the IPR proceeding, Patent Owner Wi-Fi argued that petitioner Broadcom was time-barred because of an alleged privy relationship with litigants subject to the Section 315(b) time bar. The Board rejected Wi-Fi’s argument, and rejected its request for discovery on the privity issue.

Last fall, in Achates, the Federal Circuit held that Section 314(d) prohibits review of “the Board’s determination to initiate IPR proceedings based on its assessment of the time-bar of § 315(b)” even if those issues are restated in the final written decision. On appeal, Wi-Fi argued that Achates had been “implicitly overruled” by Cuozzo and that the Board’s denial of discovery on the privity issue was just the type of “shenanigan” contemplated by Cuozzo. In rejecting this argument, the Federal Circuit panel noted that its logical conclusion “would render routine procedural orders reviewable, contrary to the entire thrust of the Cuozzo decision.”

After rejecting Wi-Fi’s time bar argument, the Federal Circuit affirmed the Board’s finding that all challenged claims are unpatentable as anticipated.

Judge Reyna filed a concurring opinion, describing why he believes a final decision concerning the time bar set forth by 35 U.S.C. § 315(b) should be subject to review, and that the contrary rule set forth in Achates should be reconsidered by an en banc Federal Circuit. Judge Reyna reasoned that “[c]ompliance with the time bar is part of the statutory basis on which the final decision rests, despite the fact that the question is first evaluated at the outset of the proceeding,” and that Cuozzo “compels us to review allegations that the Board has ignored, or erred in the application of, the statutory time bar.” Wi-Fi now has 30 days to request an en banc rehearing.