In a recent decision, the Federal Circuit affirmed that PTAB Board determinations regarding real parties in interest and privity cannot be appealed. Note to practitioners: Don’t waste your time arguing that a petition was time-barred under Section 315(b) once denied by the Board.

The patentee in WiFi One, LLC v. Broadcom argued that Broadcom was barred from petitioning for inter partes review (IPR) because it was in privity with a time-barred district court litigant. Despite the Board having already determined that no such time-bar existed, the patentee argued that the recent Supreme Court decision in Cuozzo Speed Technologies, LLC v. Lee overruled prior law.

The rules regarding real parties in interest and privity are defined in 35 U.S.C. § 315(b), which notes that the Board may not institute IPR “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.” To determine whether a petitioner is in privity with a time-barred district court litigant, the Office Patent Trial Practice Guide states that a Board must “determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.”

The statute governing the Board’s institution of IPR provides that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” 35 U.S.C. § 314(d). The Federal Circuit provided further clarity to this rule in Achates Reference Publishing, Inc. v. Apple Inc., noting that section 314(d) “prohibits this court from reviewing the Board’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 proceedings and restated as part of the Board’s final written decision.”

Despite acknowledging that Achates prevented an appeal of the Board’s prior decision regarding the petitioner’s ability to file the petition under 315(b), Wi-Fi argued that the Supreme Court’s recent decision in Cuozzo Speed Technologies, LLC v. Lee implicitly overruled Achates, by limiting the statutory bar against judicial review to the Board’s substantive determination at the time of institution and limiting the reviewability ban to issues arising under Section 314, and that time-bar issues should be reviewable because Board practice allows parties to argue those issues at trial.

The Federal Circuit denied each of WiFi’s arguments, holding that the prohibition against reviewability applies to “questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review” and noting that “Section 315 is just such a statute.”

Whether you believe that a Board’s determination regarding potential time-bar issues under 315(b) is fair or proper, the determination is final and is a reality you must live with.