In a September 2015 panel decision, Achates Reference Publishing v. Apple, the US Court of Appeals for the Federal Circuit ruled that under 35 USC 314(b), decisions of the Patent Trial and Appeal Board (PTAB) finding that an America Invents Act (AIA) petition is not time-barred cannot be appealed (IP Update, Vol. 18, No. 10). Soon after, the Supreme Court of the United States issued its decision in Cuozzo Speed Technologies v. Lee, which at least suggested that some aspects of AIA institution decisions can be appealed (IP Update, Vol. 19, No. 7).

Wi-Fi One petitioned for en banc review, arguing that Cuozzo threw the Federal Circuit’s rulings in Achates and Wi-Fi One into question. Wi-Fi One argued that in Cuozzo, the Supreme Court explained that while (under § 314(b)) most institution decisions cannot be appealed, in cases where the PTAB exceeds its statutory authority or violates due process, its decision may be reviewable.

The Federal Circuit has agreed to en banc review of the following question:

Should this court overrule Achates Reference Publishing v. Apple and hold that judicial review is available for a patent owner to challenge the US Patent and Trademark Office’s determination that the petitioner satisfied the timeliness requirement of 35 USC § 315(b) governing the filing of petitions for inter partes review?

Background on Wi-Fi One

Wi-Fi One filed suit against various customers of Broadcom, asserting the subject patent. After Broadcom challenged Wi-Fi One’s patent by petitioning for an AIA review, Wi-Fi One argued that the petition was time-barred under § 315 because, even though Broadcom was not itself sued under the patent, it worked with other companies that were sued more than a year before it filed its petition. The PTAB refused Wi-Fi One’s request to take discovery on that issue and ultimately invalidated the patent.

The Federal Circuit panel affirmed that decision, citing Achates in ruling that PTAB decisions on the time bar are part of the institution decision and are not appealable (IP Update, Vol. 19, No. 10). Wi-Fi One v. Broadcom, Case Nos. 15-1944; -1945; -1946 (Fed Cir, Jan 4, 2017) (per curium).

In a concurrence to that panel decision, Judge Reyna importuned that the issue should be reconsidered en banc because disallowing on appeal from a decision that an AIA petition was timely renders the time bar “toothless.” In another case dealing with the same issue, Click-to-Call Technologies v. Oracle Corporation (Nov. 17, 2016) (per curiam), Judges O’Malley and Taranto (concurring) also said that the Court should take up the question en banc (IP Update, Vol. 19, No. 12).