315(b) Bar is Not an Ultimate Issue of PTAB Authority to Invalidate
Back in July, the Court of Appeal for the Federal Circuit (CAFC) determined that a question of CBM eligibility was excepted from the appellate review bar for PTAB institution determinations. The exception for CBM eligibility was found because this question pertains to the PTAB's "ultimate authority to invalidate." Versata Dev. Grp., Inc. v. SAP America, Inc. 793 F.3d 1306 (Fed. Cir. 2015). Since the Versata decision, subsequent appeals from the PTAB have probed the boundaries of the exception for other "standing" type issues.
In Achates Reference Publishing Inc. v. Apple Inc., decided yesterday (here), the question presented to the Court was whether or not the petitioner time bar to IPR (35 U.S.C. § 315 (b), i.e.,12 month widow) was an issue of the PTAB's "ultimate authority to invalidate."
In finding that the 315(b) bar was not a question of the PTAB's ultimate authority, the Court explained:
[T]he § 315(b) time bar does not impact the Board’s authority to invalidate a patent claim—it only bars particular petitioners from challenging the claim. The Board may still invalidate a claim challenged in a time-barred petition via a properly-filed petition from another petitioner. Further, § 315(b) provides that “[t]he time limitation . . . shall not apply to a request for joinder under subsection (c).” 35 U.S.C. § 315(b). This means that an otherwise time-barred party may nonetheless participate in an inter partes review proceeding if another party files a proper petition. See 35 U.S.C. § 315(c). Just as the pleading in Cuozzo could have been sufficient by the inclusion of the missing prior art reference, see 793 F.3d at 1274 (“The fact that the petition was defective is irrelevant because a proper petition could have been drafted.”), the timeliness issue here could have been avoided if Apple’s petition had been filed a year earlier or if a petition identical to Apple’s were filed by another party. This is in contrast to the issue in Versata II, where “no proper pleading  could be filed to bring it within the [Board’s] § 18 authority.”
Based on this reasoning it would seem the only issue of "standing" that might be raised at the CAFC in the context of an IPR would be a First Inventor to File (FITF) patent made subject to IPR within the 9 month PGR window. (should such a mistake ever be made by the PTAB, which would seem unlikely). Or, perhaps an instituted ground that is outside of the statutory scheme for IPR. (e.g., 101, obviousness-type double patenting, 112).