In Click-to-Call Techs. v. Oracle Corp., Appeal 15-1242 (Fed. Cir. Nov. 17, 2016) (non-prec.), on remand from the Supreme Court for further consideration in view of Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016) (as we discussed here), the Federal Circuit again dismissed the patent owner’s (Click-to-Call’s) appeal, concluding that the court lacks jurisdiction to review a decision by the PTAB to institute an Inter Partes Review (IPR) petition over a patent owner’s objections that the IPR petition is time barred.

The court first determined that it lacked jurisdiction over such appeals in Achates Reference Publ’g, Inc. v Apple Inc., 803 F.3d 652, 658 (Fed. Cir. Sep. 30, 2015), cert. dismissed, 136 S. Ct. 998 (2016), and the court has now applied that precedent in both Click-to-Call and Wi-Fi One, LLC v. Broadcom Corp., Appeal 2015-1944 (Fed. Cir. Sep. 16, 2016).

The underlying issue in these cases relates to the interpretation of, and interplay between, 35 U.S.C. §§ 314(d) (the no appeal provision) and 315(b) (the time bar provision). Specifically, § 315(b) provides that an IPR may not be instituted if a petition requesting institution is filed more than 1 year after the petitioner (or real party in interest) is served with a complaint alleging patent infringement. Section 314(d) provides that a determination by the PTAB to institute an IPR “shall be final and non-appealable.” Thus, the reoccurring issue for these cases is whether a party can challenge, on appeal, a decision by the PTAB to institute an IPR, where the party alleges that the IPR was time-bared under § 315(b).

As noted by the Click-to-Call court on remand, the Federal Circuit’s earlier decisions in Achates and Wi-Fi One determined that a party cannot challenge the PTAB’s decision to institute an IPR proceeding under § 315(b) because § 314(d) “prohibits [the] court from reviewing the [PTAB]’s determination to initiate IPR proceedings based on its assessment of the time-bar of § 315(b), even if such assessment is reconsidered during the merits phase of proceedings and restated as part of the [PTAB]’s final written decision.” Slip op. at 3 (quoting Achates, 803 F.3d at 658).

Because the court in Wi-Fi One had concluded that Cuozzo did not overrule Achates (as we discussed here), the court in Click-to-Call determined that it was bound by the Wi-Fi One and Achates precedents. Thus, the Click-to-Call court dismissed the appeal for lack of jurisdiction pursuant to § 314(d).

Perhaps more interesting than the decision itself are the concurring opinions of Judge O’Malley and Judge Taranto, each calling for en banc review of the jurisdiction issue. As stated by Judge O’Malley:

Because we are bound by the court’s previous decisions in Achates and Wi-Fi One, I agree with the court’s dismissal of [the patent owner’s] challenge under § 315(b). I write separately, however, to note that I believe the Supreme Court’s language in Cuozzo leaves room for us to question our reasoning in Achates and to suggest that we do so en banc.

O’Malley Concurrence Slip op. at 2 (O’Malley, J., concurring).

Judge Taranto agreed that the court was bound by Wi-Fi One and that en banc review was appropriate, however he went beyond Judge O’Malley’s opinion, by suggesting that he would be inclined to overrule Achates if the issue were taken up en banc:

The § 315(b) issue is a recurring one. Moreover, the principle of presumed judicial review for agency action that harms private persons is an important one. At present, it appears to me that Achates is incorrect and that en banc review is warranted.

Taranto Concurrence Slip op. at 11 (Taranto, J., concurring).

In addition to Judges O’Malley and Taranto, Judge Reyna, in a concurring opinion in Wi-Fi One, has taken the position that this issue should be taken up en banc. Accordingly, the § 315(b) issue may soon be reconsidered by the court, perhaps based on a petition for en banc review filed in Click-to-Call or Wi-Fi One. Stay tuned.