En Banc Federal Circuit holds that IPR Institution Decisions are appealable insofar as the issue on appeal is timeliness under 35 U.S.C. § 315(b).
Wi-Fi One LLC v. Broadcom, Case No. 2015-1944 (Fed. Cir. January 8, 2018)
The USPTO’s institution decisions on inter partes review (IPR) are “final and nonappealable” according to 35 U.S.C.§ 314(d). A different statutory provision requires IPR petitions be filed within one year of the petitioner (or real party in interest, or privy) being served with a complaint alleging infringement. 35 U.S.C. § 315(b).
In the case of Wi-Fi One LLC v. Broadcom, Case No. 2015-1944 (Fed. Cir. January 8, 2018), the Federal Circuit held that IPR institution decisions are appealable insofar as the issue on appeal is timeliness under 35 U.S.C. § 315(b). The Federal Circuit over-ruled a prior case with a contrary holding, Achates Ref. Publishing v. Apple, Inc., 803 F. 3d 652, (Fed. Cir. 2015).
The majority opinion relied on the strong presumption favoring judicial review of agency actions, which can be overcome only when there is clear and convincing evidence that Congress intended to prohibit judicial review. The majority found no clear evidence that Congress intended to prohibit judicial review under such circumstances. Further, although § 314 states that institution decisions under this section are final and nonappealable, the court noted that § 315 is not under the same section as § 314.
The majority opinion also analyzed the Supreme Court’s prior decision in Cuozzo Speed Technologies, LLC v. Lee. In Cuozzo, the Supreme Court held that institution decisions are generally nonappealable, but noted that “our interpretation applies where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.” (emphasis added).
The majority in Wi-Fi One held that § 315, which sets forth the one year time bar, is not “closely related” to the UPSTO’s preliminary patentability assessment at the institution phase, under § 314. As a result, the majority found that the Cuozzo case did not directly address the issue decided by the Federal Circuit in Wi-Fi One.
Judge O’Malley’s concurrence largely agreed with the majority, but focused on how the USPTO lacks jurisdiction to undertake IPR if a petition is not filed within one year of the petitioner being served with a complaint.
The dissent (joined by Judges Hughes, Lourie, Bryson, and Dyk) argued that the majority did not properly interpret the “final and nonappealable” language of 35 U.S.C.§ 314(d). The dissent also argued that the petition’s timeliness is closely tied to the USPTO’s decision to institute. In the view of the dissenters, the Supreme Court’s decision in Cuozzo thus prevented the Federal Circuit from holding that institution decisions are appealable, even when the issue on appeal is whether the petitioner timely filed the petition under § 315(b).