Federal Circuit Holds En Banc That The PTAB’s Determination on Whether The One Year Time-Bar is Triggered in Inter Partes Review Is Reviewable on Appeal
On January 8, 2018, the Federal Circuit issued its long-awaited en banc decision in Wi-Fi One, LLC v. Broadcom Corporation, No. 2015-1944, 2018 WL 313065 (Fed. Cir. Jan. 8, 2018). The issue before the en banc Court was the reviewability on appeal of the one year time-bar for inter partes review set forth in 35 U.S.C. § 315(b). The § 315(b) time-bar prohibits petitioners—as well as their privies and any real parties in interest—from filing an IPR petition more than one year after being served with a complaint alleging infringement of the challenged patent.
An earlier panel of the Federal Circuit had determined that the Patent Trial and Appeal Board’s determinations with respect to § 315(b) were unreviewable in view of the § 314(d) bar against appealing institution decisions. See Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015). The en banc Court overruled Achates and held that the PTAB’s decision not to apply the § 315(b) time-bar is reviewable on appeal from a final decision. Judges Hughes, Lourie, Bryson, and Dyk dissented on grounds that the appeal bar of § 314(d) should be regarded as “absolute” and that § 315(b) should be subject to it and thus not appealable.
The en banc majority first considered the Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016) and evaluated how application of the § 315(b) time-bar differs from the PTAB’s discretion to institute trial on the merits. The majority held that the PTAB’s assessment of the § 315(b) time-bar does not go to the merits of the petition and is therefore “not akin to either the non-initiation or preliminary-only merits determinations for which unreviewability is common in the law, in the latter case because the closely related final merits determination is reviewable.” The majority reasoned: “The time bar is not merely about preliminary procedural requirements that may be corrected if they fail to reflect real-world facts, but about real-world facts that limit the agency’s authority to act under the IPR scheme.”
The majority also focused on the Supreme Court’s reasoning in Cuozzo that there is a strong presumption favoring judicial review of agency determinations. In light of this heavy presumption, the majority held: “We find no clear and convincing indication in the specific statutory language in 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 . . . .” Having concluded that § 315(b) is not “closely related” to the provisions considered by the Supreme Court in Cuozzo—but rather to a statutory “condition precedent to the Director’s authority to act”—the majority concluded that “[e]nforcing statutory limits on an agency’s authority to act is precisely the type of issue that courts have historically reviewed,” and thus, “[w]e hold that time-bar determinations under § 315(b) are reviewable by this court.”
Viewed narrowly, the holding in Wi-Fi One means that patent owners who challenge petitions as being time-barred under § 315(b) can now appeal an adverse determination on that issue to the Federal Circuit. Common examples include cases where the patent owner has alleged that the petitioner is in privity with a time-barred party, or that the real party in interest is time-barred. Challenges based on privity or real party in interest can involve related discovery disputes and administrative rulings. Other examples include the PTAB’s statutory interpretation of § 315(b), including administratively created exceptions and whether it may be triggered by arbitration complaints or complaints in International Trade Commission investigations.
Viewed more broadly, the holding in Wi-Fi One indicates that a majority of the en banc Court views limits on the PTAB’s authority to be categorically different from the PTAB’s initial assessment of the “merits.” Judge O’Malley’s concurring opinion in Wi-Fi One provides helpful guidance on the contours of this critical distinction. Further, this development in the law opens the door to a greater variety of challenges than were previously thought viable under Cuozzo.
While the holding in Wi-Fi One does not mean that all time-bar challenges under § 315(b) will prove successful—or even that the PTAB got it wrong in Wi-Fi One—it does mean that patent owners who have raised a challenge under § 315(b) that was unavailing before the PTAB will have their day in court if they properly raise, preserve, and appeal that issue. We expect informative developments regarding the merits of the § 315(b) challenge following remand of Wi-Fi One to the merits panel of the Federal Circuit. We will keep you apprised.
Coincidentally, on January 11, 2018 the PTAB announced two §315(b) decisions as informative: Luv N’ Care, Ltd. v. McGinley, Case IPR2017-01216 (PTAB Sept. 18, 2017) (Paper 13) and Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals, Inc., Case IPR2014-00360 (PTAB June 27, 2014) (Paper 15). This rounded out to four the total informative decisions on this issue: TRW Auto. U.S. LLC v. Magna Elecs., Inc., Case IPR2014-00293 et al., Paper 18 (June 27, 2014) and Motorola Mobility LLC v. Patent of Michael Arnouse, Case IPR2013-00010, Paper 20 (Jan. 30, 2013).
In Luv N’ Care, the Board denied institution after determining that the petition was not timely filed under 35 U.S.C. § 315(b), because payment was not received by the Office until after the date the petition was filed. The Board also denied petitioner’s motion to assign an earlier filing date to the petition after determining that petitioner failed to show good cause for waiving the fee requirement.
In Amneal and TRW, the Board determined that the petitioner was timely filed under 35 U.S.C. § 315(b) because filing a motion to amend the complaint in district court, with an amended complaint attached, does not constitute service.
In Motorola Mobility, the Board determined that a petitioner must be served with a summons and complaint before the one-year time period for filing an inter partes review petition is triggered.
Finally, two PTAB decisions have been designated precedential on § 315(b) bar determining that a district court dismissal without prejudice does not trigger a § 315(b): LG Elecs., Inc. v. Mondis Tech. Ltd., Case IPR215-00937, Paper 8 (Sept. 17, 2015) and Oracle Corp. v. Click-to-Call Techs. LP (§ III.A), Case IPR2013-00312, Paper 26 (Oct. 30, 2013).