On January 8, 2018, the Federal Circuit sitting en banc issued its decision in Wifi One, LLC v. Broadcom Corp., No. 2015-1944, holding that PTAB decisions with respect to whether petitions for inter partes review are time-barred are reviewable on appeal. Prior to this decision, such decisions were final and non-appealable as part of a “decision to institute” following Achates Ref. Publg., Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015). In Wifi One, the Federal Circuit overruled Achates, and will now allow both petitioners and patent owners to appeal PTO decisions relating to the time bar.
The issue in this case involves two sections of the AIA. Section 315(b) provides that the office may not institute IPR proceedings 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” involved in the petition. See 35 U.S.C. § 315(b). However, another provision of the AIA provides that decisions “whether to institute an inter partes review under this section shall be final and nonappealable.” 35 U.S.C. § 314(d). Last term, the Supreme Court explained that the no-review provision precluded appellate review of “questions that are closely tied to the application and interpretation of statutes related to” the institution decision, such as determinations that a petition presents a reasonable likelihood of success on the merits. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016). However, the Court left open the question of whether certain decisions that touch on “constitutional questions” or those that “depend on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond ‘this section’” would be reviewable on appeal. Id.
In Wifi One, a majority of the Federal Circuit answered that question in the affirmative for decisions relating to the time bar. The majority opinion, authored by Judge Reyna, starts with the “strong presumption” that Congress does not intend to preclude judicial review of agency action unless “Congress provides a ‘clear and convincing’ indication that it intends to prohibit review.” The court then looked to the language of § 314(b) and the legislative history of the AIA and found no indication that Congress intended to prohibit review of time-bar decisions. According to the majority, time-bar decisions are related to the “Director’s authority to institute IPR” and are “not akin to either the non-initiation or preliminary-only merits determinations for which unreviewability is common in the law.” Thus, the majority concluded that the PTO’s “time-bar determinations under § 315(b) are not exempt from judicial review.”
Judge Hughes dissented, joined by Judges Lourie, Bryson,* and Dyk. The dissenters would have upheld the status quo, reading § 314(d)’s appeal bar as clearly and unmistakably prohibiting judicial review of the entirety of a decision to institute IPR because “[t]he statute calls out a specific agency determination, and expressly prohibits courts from reviewing that decision.” Judge O’Malley also filed a short concurrence, emphasizing her belief that time-bar decisions should be reviewable because § 315’s time bar goes directly to the PTO’s jurisdiction.
The decision is sure to be met with a cert petition from the government and/or the petitioner. We will, of course, be watching for that petition and any other important Federal Circuit news and will keep you apprised of any important updates.
*Judge Bryson went on senior status in 2013 but was able to participate in the en banc decision because he authored the original panel opinion.