As we reported earlier, the Federal Circuit decided in January 2017 to rehear en banc whether the PTAB’s findings regarding 35 U.S.C. § 315(b)’s one year bar can be reviewed on appeal. Wi-Fi One v. Broadcom Corp. The Federal Circuit directed the parties to brief the following question:

Should this court overrule Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) and hold that judicial review is available for a patent owner to challenge the PTO’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review?

In the underlying appeal, patent owner Wi-Fi One sought review of three unfavorable PTAB final written decisions resulting from IPR petitions filed by Broadcom. Certain of Broadcom’s customers had been sued more than one year prior to Broadcom’s petitions, but Broadcom itself had not been sued. Wi-Fi One argued that Broadcom was barred from filing those IPRs based on an indemnity agreement that existed between Broadcom and the customers. The Board disagreed, instituted trials, and issued final written decisions. Wi-Fi One appealed to the Federal Circuit.

The Federal Circuit panel reasoned that the issue of whether the Federal Circuit could review the PTAB’s § 315(b) decision was already decided by Achates. Wi-Fi One’s en banc rehearing petition argued that the Supreme Court’s Cuozzo decision did not ratify the Achates ruling, but instead left open the question of whether Achates was properly decided. Wi-Fi One further argued that § 314(d) only prevents appeal of issues “closely related” to the decision on whether “there is a reasonable likelihood that the petitioner would prevail,” as recited in § 314(a). Wi-Fi One argued that Cuozzo expressly recognized other types of institution-related inquiries that are appealable (e.g., denial of due process, agency acted outside of statutory limits), and that the § 315(b) time bar question is one of those types of inquiries.

The Patent Owner’s Opening En Banc Brief. Wi-Fi One’s opening en banc brief maintained that Achates was wrongly decided and should be overruled by the full Federal Circuit. Wi-Fi One stressed the strong presumption of judicial review, and argued that the § 315(b) time bar issue is not a “mine run” type of challenge precluded from judicial review under Cuozzo.

Amicus Briefing, Round One. In February 2017, the Federal Circuit received an initial round of friend-of-the-court briefs supporting neither party. Jones Day was pleased to author the amicus brief to the en banc court submitted by the Intellectual Property Owners Association (IPO). Other amicus briefs were submitted by the Federal Circuit Bar Association, the American Intellectual Property Law Association, the New York Intellectual Property Law Association, the Boston Patent Law Association, the Biotechnology Innovation Organization, a group of Professors of Patent and Administrative Law, and one individual. Two companies that own patent portfolios (WesternGeco LLC and Elm 3Ds Innovations, LLC) submitted briefs expressly in support of patent owner Wi-Fi One.

The Petitioner Broadcom’s En Banc Brief. Broadcom filed its en banc brief on March 15, 2017. Broadcom argued that Achates was correctly decided and should not be overruled, and that a patent owner simply cannot appeal the PTAB’s determination that an IPR petition is timely filed under § 315(b). According to Broadcom, while Cuozzo “recognized that an institution decision may be appealable if the Board violated the Constitution or ‘act[ed] outside its statutory limits by, for example, canceling a patent claim for ‘indefiniteness under § 112’ in inter partes review,’” the Federal Circuit in “Achates correctly found those exceptions inapplicable where a patent owner challenges only the Board’s fact-intensive resolution of a routine discovery dispute and its equally fact-bound, case-specific analysis of whether a non-party is a ‘real party in interest’ or ‘privy’ that would render the petition untimely under § 315(b).”

The PTO’s En Banc Brief. The Federal Circuit invited the PTO to submit its views via an amicus brief, and the PTO submitted its en banc brief on March 22, 2017. The PTO asked the en banc Federal Circuit to “reaffirm what the plain language of the statute and the Supreme Court’s reasoning in Cuozzo make clear: the USPTO’s interpretation and application of the provisions of the Patent Act that bear only on the institution decision, such as section 315(b), is final and nonappealable.” The PTO’s basic position is that “section 315(b) is one of a handful provisions of the Patent Act that operate only at the institution phase of an inter partes review,” and “[t]he plain import of section 314(d) is that Congress intended to insulate the USPTO’s administration of such statutes from challenge on appeal.”

Amicus Briefing, Round Two. A second round of amicus briefs were submitted in March 2017 supporting the position of Broadcom (and the PTO). Intel, Oracle, and Apple each submitted a brief supporting the position that the § 315(b) time bar issue is not appealable

The Remaining En Banc Schedule. Wi-Fi One’s reply brief will be due on April 12, 2017. The en banc Federal Circuit will hear argument on May 4, 2017, and a decision is expected in Summer or early-Fall 2017.