Federal Circuit to determine whether PTAB decisions concerning the America Invents Act’s one-year time-bar are appealable
• PTAB determinations regarding the one-year bar are not currently appealable to the Federal Circuit.
• Wi-Fi One rehearing will revisit this issue in view of the Supreme Court’s decision in Cuozzo.
• The Federal Circuit has invited parties to file amici briefs.
On January 4, 2017, the Federal Circuit granted rehearing en banc1 of Wi-Fi One, LLC v. Broadcom Corp., 837 F.3d 1329 (Fed. Cir. 2016), which followed Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015). The court, therefore, declined to review the patent owner’s challenge of the Patent Trial and Appeal Board’s (PTAB) finding regarding the one-year bar set forth in 35 U.S.C. § 315(b). The rehearing will address whether the Federal Circuit should overrule Achates and hold that parties may appeal the PTAB’s timeliness determinations under § 315(b). The Federal Circuit has given parties permission to file amici briefs without first obtaining leave of the court.
Timeliness Determinations under § 315(b) Are Currently Not Appealable
Under 35 U.S.C. § 315(b), the PTAB may not institute inter partes review (IPR) if the petition is filed more than one year after the date on which the petitioner, real party-in-interest or privy of the petitioner is served with a patent infringement complaint.
The one-year time-bar serves to reduce duplicative proceedings before the PTAB and district court by forcing parties to initiate proceedings before the PTAB soon after they are sued for infringement in district court. This allows the PTAB to resolve invalidity issues early so that the parties and courts may avoid unnecessarily expending time and resources.
In Achates, patent owner Achates appealed the PTAB’s decision instituting IPR and finding several claims of the challenged patents invalid. 2 Achates argued that the PTAB’s decisions were outside its statutory authority because the underlying petitions for IPR were time-barred under § 315(b). The Federal Circuit held that the PTAB’s determination that an IPR petition is timely is part of the determination on whether to institute a petition for IPR and, therefore, is “final and nonappealable” under 35 U.S.C. § 314(d).
The Federal Circuit has since relied on Achates several times to decline review of the PTAB’s time-bar decisions, including Wi-Fi One. Some Federal Circuit judges, however, have called into question whether Achates was decided correctly, and a few judges have asked outright for the issue to be reconsidered en banc. 3 Most recently, Judge Reyna’s concurring opinion in Wi-Fi One suggested that the issue should be addressed en banc and that, in his opinion, the PTAB’s time-bar decisions under § 315(b) should be reviewable on appeal.
The Federal Circuit Will Reconsider En Banc Whether § 315(b) Timeliness Determinations are Appealable
On January 4, 2017, the Federal Circuit issued an order granting patent owner Wi-Fi One’s petition to rehear en banc the court’s decision in Wi-Fi One. In that case, patent owner Wi-Fi One appealed the PTAB’s decision instituting IPR and finding several claims of the challenged patent invalid.4 Wi-Fi One argued that petitioner was barred from seeking review of the challenged patent because it was in privity with certain entities that had been served with complaints, and that because those entities would be timebarred from seeking IPR of the patent, the petitioner is time-barred as well under § 315(b).
Wi-Fi One did not dispute that the PTAB’s timeliness ruling is not appealable if Achates is still good law. Instead, Wi-Fi One argued that the Supreme Court’s recent decision in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) implicitly overruled Achates.
The Federal Circuit disagreed, stating that the Supreme Court held in Cuozzo that the statute’s prohibition against reviewing institution decisions extends to “questions that are closely tied” to the decision to institute and that § 315(b) “is just such a statute.”5 Thus, Achates is still good law, and the PTAB’s timebar decision was not appealable.
Although the Federal Circuit dismissed Wi-Fi One’s appeal based on Achates, it identified portions of Cuozzo that suggest that some aspects of PTAB institution decisions may be appealed. For example, the Supreme Court stated that its Cuozzo decision does not enable the PTAB to act “outside its statutory limits” and that such “shenanigans” are properly reviewable.6
The rehearing of Wi-Fi One en banc will address whether the Federal Circuit should overrule Achates and hold that judicial review is available for a patent owner to challenge the PTAB’s determination that the petitioner satisfied the timeliness requirement of § 315(b). The Federal Circuit has invited the views of the U.S. Patent and Trademark Office (USPTO) as amicus curiae and granted all others leave to file without further permission from the court.
While a number of Federal Circuit judges have suggested that Achates should be overturned, whether enough Judges on the Federal Circuit will agree remains uncertain. Therefore, it remains to be seen whether time-bar rejections under § 315(b) are the type of “shenanigans” the Supreme Court in Cuozzo warned might be reviewable.
Should the en banc court overturn Achates and allow challenges to the PTAB’s timeliness determinations under § 315(b), it could significantly impact the way the parties and the PTAB confront the issue of timeliness of IPR petitions because patent owners would have an additional procedure for challenging institution of IPR proceedings. Given the fact-intensive, case-by-case nature of the § 315(b) time-bar, patent owners would likely appeal this issue more often. And because the PTAB’s determinations would be subject to Federal Circuit review, the PTAB would likely provide more rigorous analyses in support of its time-bar determinations.