Federal Circuit Holds That IPR Time-Bar Determinations Can Be Appealed
Earlier this week, the Federal Circuit issued an en bancopinion in Wi-Fi One v. Broadcom that holds the PTAB’s determinations of whether an IPR petition was timely filed under 35 U.S.C. § 315(b) are appealable. In reaching this decision, the en banc court overruled an earlier panel’s decision that such time-bar determinations are final and nonappealable under § 314(d), paving the way for parties in future IPR disputes to raise the timeliness issue on appeal.
Section 314 relates to the threshold required for the PTO Director to institute an IPR proceeding, namely, that there is a “reasonable likelihood” the petitioner will successfully invalidate at least one of the claims subject to review. Subsection (d) specifically 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) relates to the timing requirements for petitions to be submitted: “[a]n inter partes review may not be instituted if the petition requesting the proceeding 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.”
The instant dispute began in 2013 when Broadcom filed three IPR petitions on patents owned by Ericsson. The patents had been the subject of an earlier litigation in the Eastern District of Texas in which Ericsson alleged infringement against multiple defendants, not including Broadcom. While the IPRs were pending, Ericsson transferred ownership of the patents to Wi-Fi One. Wi-Fi One argued that, because Broadcom was in privity with the Texas defendants, the PTO Director did not have authority to institute IPR of the patents because the petitions were not timely filed under § 315(b). The PTAB rejected Wi-Fi One’s position and instituted IPR on the challenged claims—which were subsequently deemed unpatentable in the PTAB’s Final Written Decisions. In these Decisions, the PTAB also determined that Wi-Fi One had not proven the privity issue and thus Broadcom’s petitions were not time-barred.
Wi-Fi One appealed the Final Written Decisions—including the timeliness issue—to the Federal Circuit, in which a panel of judges held that the PTAB’s time-bar determinations made under § 315(b) were nonappealable under § 314(d), citing its 2015 panel decision in Achates Reference Publishing, Inc. v. Apple Inc. which came to the same conclusion. Wi-Fi One then petitioned the court for rehearing en banc, which was granted. The en banc court ruled in favor of Wi-Fi One, overruling Achates and holding that time-bar determinations made by the PTAB are appealable.
The majority relied on the “strong presumption favoring judicial review of administrative actions,” absent clear and convincing evidence of congressional intent to prohibit such review, as a foundation for its ruling. The court found no clear and convincing evidence in either the statutory language, the statutory scheme as a whole, or the legislative history that would suggest Congress intended to prevent parties from appealing time-bar determinations made by the PTAB.
With respect to the statutory language, the majority seized on the phrase “under this section” in § 314(d) and concluded that, in the context of § 314 as a whole, Congress intended only that determinations of whether to institute an IPR based on the petitioner’s patentability arguments, or the Director’s discretion not to institute, are “final and nonappealable.” Such an interpretation of § 314(d), the court opined, is consistent with the Supreme Court’s ruling in Cuozzo, where the Court held that § 314(d) bars judicial review of determinations of compliance with § 312(a)(3) relating to whether the petition identifies the basis for its claim challenges with sufficient particularity. In both Cuozzo and in the present case, the majority determined that the Director’s decision whether to institute is a preliminary merits determination “for which unreviewability is common in the law.”
Similarly, upon analyzing the statutory scheme as a whole, the majority found that time-bar determinations under § 315(b) are not closely related to institution decisions made under § 314(a). The majority reasoned that the § 315(b) “controls the Director’s authority to institute IPR that is unrelated to the Director’s preliminary patentability assessment or the Director’s discretion not to initiate.” According to the majority, “[e]nforcing statutory limits on an agency’s authority to act is precisely the type of issue that courts have historically reviewed.” Because § 315(b) places a limitation on the Director’s ability to institute, and does not relate to his discretion to institute, the Federal Circuit concluded that time-bar determinations are reviewable on appeal.
The Federal Circuit’s decision in Wi-Fi One v. Broadcom will undoubtedly affect both pending and future IPRs, as parties evaluate whether the circumstances of their proceeding warrant an appeal of the PTAB’s timeliness determination. Importantly, the court did not answer the question of when such appeals can be filed—immediately after the institution decision is made, or only after the final written decision is issued? Therefore, parties should continue to keep a close watch on the PTAB’s decision-making moving forward to see how the Board responds.
The case is Wi-Fi One, LLC v. Broadcom Corp., Case No. 2015-1944 (Fed. Cir. Jan. 8, 2018) (en banc). A copy of the court’s opinion can be found here.