On January 8, 2018, the Federal Circuit issued its long-awaited en banc decision in Wi-Fi One, LLC v. Broadcom Corporation, No. 2015-1944, 2018 WL 313065 (Fed. Cir. Jan. 8, 2018). The issue before the en banc Court was the reviewability on appeal of the one year time-bar for inter partes review set forth in 35 U.S.C. 315(b). The 315(b) time-bar prohibits petitioners--as well as their privies and any real parties in interest--from filing an IPR petition more than one year after being served with a complaint alleging infringement of the challenged patent. An earlier panel of the Federal Circuit had determined that the Patent Trial and Appeal Board's determinations with respect to 315(b) were unreviewable in view of the 314(d) bar against appealing institution decisions. See Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015). The en banc Court overruled Achates and held that the PTAB's decision not to apply the 315(b) time-bar is reviewable on appeal from a final decision. Judges Hughes, Lourie, Bryson, and Dyk dissented on grounds that the appeal bar of 314(d) should be regarded as "absolute" and that 315(b) should be subject to it and thus not appealable. The en banc majority first considered the Supreme Court's decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016) and evaluated how application of the 315(b) timebar differs from the PTAB's discretion to institute trial on the merits. The majority held that the PTAB's assessment of the 315(b) time-bar does not go to the merits of the petition and is therefore "not akin to either the non-initiation or preliminary-only merits determinations for which unreviewability is common in the law, in the latter case because the closely related final merits determination is reviewable." The majority reasoned: "The time bar is not merely about preliminary procedural requirements that may be corrected if they fail to reflect real-world facts, but about real-world facts that limit the agency's authority to act under the IPR scheme." The majority also focused on the Supreme Court's reasoning in Cuozzo that there is a strong presumption favoring judicial review of agency determinations. In light of this heavy presumption,
the majority held: "We find no clear and convincing indication in the specific statutory language in the AIA, the specific legislative history of the AIA, or the statutory scheme as a whole that demonstrates Congress's intent to bar judicial review of 315(b) time-bar determinations . . . ." Having concluded that 315(b) is not "closely related" to the provisions considered by the Supreme Court in Cuozzo--but rather to a statutory "condition precedent to the Director's authority to act"--the majority concluded that "[e]nforcing statutory limits on an agency's authority to act is precisely the type of issue that courts have historically reviewed," and thus, "[w]e hold that time-bar determinations under 315(b) are reviewable by this court." Viewed narrowly, the holding in Wi-Fi One means that patent owners who challenge petitions as being time-barred under 315(b) can now appeal an adverse determination on that issue to the Federal Circuit. Common examples include cases where the patent owner has alleged that the petitioner is in privity with a time-barred party, or that the real party in interest is time-barred. Challenges based on privity or real party in interest can involve related discovery disputes and administrative rulings. Other examples include the PTAB's statutory interpretation of 315(b), including administratively created exceptions and whether it may be triggered by arbitration complaints or complaints in International Trade Commission investigations. Viewed more broadly, the holding in Wi-Fi One indicates that a majority of the en banc Court views limits on the PTAB's authority to be categorically different from the PTAB's initial assessment of the "merits." Judge O'Malley's concurring opinion in Wi-Fi One provides helpful guidance on the contours of this critical distinction. Further, this development in the law opens the door to a greater variety of challenges than were previously thought viable under Cuozzo. While the holding in Wi-Fi One does not mean that all time-bar challenges under 315(b) will prove successful--or even that the PTAB got it wrong in Wi-Fi One--it does mean that patent owners who have raised a challenge under 315(b) that was unavailing before the PTAB will have their day in court if they properly raise, preserve, and appeal that issue. We expect informative developments regarding the merits of the 315(b) challenge following remand of Wi-Fi One to the merits panel of the Federal Circuit. We will keep you apprised.