The Federal Circuit has again concluded it may not review the PTAB’s institution of inter partes review (IPR) over a patent owner’s objections that the IPR petition is time barred. Wi-Fi One, LLC v. Broadcom Corp., Appeal 2015-1944 (Fed. Cir. Sept. 16, 2016). The court’s conclusion may be somewhat surprising because earlier this summer, in another case, the Supreme Court issued an order vacating the Federal Circuit’s decision that reached a similar conclusion. Click-to-Call Technologies, LP v. Oracle Corp., 622 Fed. Appx. 907 (Fed. Cir. 2015) (per curiam), vacated, 136 S. Ct. 2508 (Mem) (2016). We discussed that case and the Court’s order here.

In Wi-Fi, the patent owner (Wi-Fi One, LLC) argued that the IPR petitioner (Broadcom Corporation) was in privity with entities accused (and eventually adjudged) in parallel district court litigation of infringing the challenged patent. Those entities, the patent owner argued, would have been time-barred from seeking IPR under 35 USC § 315(b). Section 315(b) defines a time period outside of which a party may not petition for inter partes review: “An inter partes review may not be instituted 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.” The patent owner argued that the petitioner, alleged to be in privity with those litigants, is also time-barred.

The patent owner unsuccessfully sought discovery to prove the petitioner’s privity with the time-barred district court litigants. First, the patent owner filed a motion with the PTAB seeking such discovery. The PTAB found, however, that the petitioner did not provide evidence to show that there is more than a mere possibility that the discovery even exists. Importantly, the PTAB concluded the patent owner failed to show the petitioner had control over the district court litigation. And despite evidence of an indemnity agreement between the petitioner and one of the district court litigants, the PTAB concluded the interests of justice did not warrant the discovery the patent owner requested.¹ Next, the patent owner unsuccessfully petitioned the PTAB to rehear its discovery motion. In denying the rehearing petition, the PTAB emphasized the “weight of authority … shows control over prior litigation is a crucial factor normally required to bind a party to that prior litigation using collateral estoppel.”² Finally, the patent owner unsuccessfully petitioned the Federal Circuit for a writ of mandamus.³ Discovery denied, the PTAB eventually issued a final written decision canceling the claims of the challenged patent. The present appeal ensued with the patent owner continuing to argue that the petitioner was time barred from petitioning for inter partes review.

The Federal Circuit has repeatedly held that the “No Appeal” provision in 35 USC § 314(d)—that the “determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable”—prohibits the court from reviewing the PTAB’s determination to initiate IPR proceedings based on its assessment of the § 315(b) time bar. See, e.g., Achates Reference Publ’g, Inc. v Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015), cert. dismissed, 136 S. Ct. 998 (2016). In Wi-Fi, the patent owner argued “that the Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), implicitly overruled Achates.” The Federal Circuit disagreed, stating the Supreme Court extended the No Appeal provision to statutes, like § 315(b), related to the PTAB’s institution decisions:

The Supreme Court stated 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.” Section 315 is just such a statute. The time-bar set forth in section 315 addresses who may seek inter partes review, while section 312 governs what form a petition must take. Both statutes govern the decision to initiate inter partes review.

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The Supreme Court extended the preclusion of judicial review to statutes related to the decision to institute; it did not limit the rule of preclusion to substantive patentability determinations made at the institution stage, as the facts of Cuozzo itself make clear.

Slip op. at 8.

Here, the patent owner is complaining that the PTAB exceeded its scope of statutory authority in instituting the IPR. The PTAB refused discovery into the issue. The Federal Circuit denied interlocutory mandamus relief. And, following the PTAB’s final judgment cancelling the challenged patent claims, the Federal Circuit has refused to review the PTAB’s decision to institute the IPR. The court’s adherence to Achates is surprising, given the Supreme Court’s recent order vacating the Federal Circuit’s Click-to-Call decision and given “the general rule that [an] appeal from final judgment opens the record and permits review of all rulings that led up to the judgment,” including rulings regarding subject matter jurisdiction. 15A Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 3905.1, at 250, 252 (2d ed. 1992); see 5 U.S.C. § 704 (“A preliminary, procedural, or intermediate agency action or ruling not directly reviewable is subject to review on the review of the final agency action.”).

The concurring opinion reaches the same result, but suggests that the issue should be taken up en banc, stating: “Cuozzo explicitly notes that its holding does not ‘enable the agency to act outside its statutory limits’ and that such ‘shenanigans’ are properly reviewable.” According to the concurring opinion, “Achates renders § 315(b) toothless,” the holding in Achates “should be reconsidered by the en banc court,” and a final PTAB decision concerning the § 315(b) time bar “should be subject to review.” Unless the court decides to reconsider the Wi-Fi decision en banc, there remains no avenue for appellate review.