The Federal Circuit has opened the door to appeals on the timeliness of inter partes review proceedings and possibly to discovery in PTAB proceedings related to this issue. On January 8, 2017, in Wi-Fi One, LLC v. Broadcom Corporation, No. 2015-1944, by a vote of 9 to 4, the Federal Circuit ruled en banc that the Patent Trial and Appeal Board (“the PTAB”)’s time-bar determinations under 35 U.S.C. § 315(b) are not appealable, thereby overturning its 2015 decision in Achates Reference Publishing, Inc. v. Apple.

In Wi-Fi One, Wi-Fi alleged that Broadcom’s three IPR petitions were time-barred under § 315(b) because the defendants in the underlying litigation, which was filed more than a year prior to the filing of the petitions, were in privity with Broadcom. But the PTAB ultimately found that Wi-Fi failed to show that Broadcom was in privity with the defendants. A panel upheld that decision. Wi-Fi petitioned for rehearing en banc.

The issue for en banc rehearing was whether the bar on judicial review of IPR institution decisions in § 314(d) applies to the Board’s time-bar determinations made under § 315(b). Section 314(d) provides that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” Section § 315(b) provides that an inter partes review may not be instituted if the petition 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.” In Achates, the panel held that the “final and nonappealable” language in § 314(d) prohibits judicial review of the PTAB’s determination to initiate IPR proceedings based on the time bar limitation of § 315(b).

In overturning Achates, the majority applied the “strong presumption” standard set forth by the Supreme Court in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016). The Supreme Court in Cuozzo instructed that the “strong presumption” favoring judicial review “may be overcome by ‘clear and convincing’” indications that Congress intended to bar review. Id. at 2140. The majority found no such clear and convincing indication in the specific statutory language of 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. The majority construed the language of § 314(d) narrowly and held that it did not apply to time-bar determinations, but only the non-initiation and preliminary-only merits determinations “for which unreviewability is common in the law,”. The majority held that the § 315(b) time-bar determinations are “fundamentally different” from other requirements addressed in Cuozzo such as § 312(a)(3), those that are “closely tied” to the patentability determinations.

Judge Hughes, joined by three other judges, dissented. Judge Hughes criticized the majority’s narrow reading of the statute as which “not only contradicts the statutory language, but is also contrary to the Supreme Court’s construction of that language in Cuozzo.” Judge Hughes opined that “Cuozzo confirms that 314(d) is not limited to the merits of the petition, but also bars judicial review of closely related issues such as the petition’s timeliness.”

What This Means for You

By reversing its previous decision that the Board’s time-bar determinations are not appealable, the Federal Circuit’s decision in Wi-Fi One will invite more petitions involving disputes concerning the applicability and interpretation of the statutory language of § 315(b). (The majority declined to address whether their reasoning applied to other sections of the AIA such as Sections 311-14.) As the Board’s time-bar determinations are now appealable, the parties to an IPR are likely to spend more resources and time on discovery concerning the § 315(b) issues to preserve such issues for appeal. However, litigants should carefully monitor the aftermath of Wi-Fi One. Litigants should also be aware that the Wi-Fi One decision could result in similar appellate issues being raised on other sections of the AIA.