May 21, 2019

May 21, 2019

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May 20, 2019

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Federal Circuit Panel Urges Court to Revisit Reviewability of § 315(b) En Banc

Addressing jurisdictional issues on remand from the Supreme Court of the United States, the US Court of Appeals for the Federal Circuit dismissed an appeal of a Patent Trial and Appeal Board (PTAB or Board) decision to institute inter partes review (IPR) for lack of jurisdiction. Click-to-Call Technologies, LP v. Oracle Corporation, Case No. 15-1242 (Fed. Cir., Nov. 17, 2016) (per curiam) (O’Malley, J, and Taranto, J, concurring). 

Click-to-Call (CTC) appealed the PTAB’s decision on patentability in an IPR proceeding. According to CTC, the IPR proceeding should have been time barred under 35 USC § 315(b), which provides that an IPR “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent.” While the appeal was pending, the Federal Circuit issued its decision in Achates Reference Publishing, Inc. v. Apple, Inc. (available here), where the Court held that 35 USC § 314(d) prohibits appellate review of a PTAB determination to initiate IPR proceedings based on an assessment of the § 315(b) time-bar. 

The Supreme Court granted certiorari in this case and remanded it back down to the Federal Circuit for further consideration in light of the recently issued decision in Cuozzo Speed Technologies, LLC v. Lee.. However, following the Supreme Court’s remand, and during the briefing in this case, the Federal Circuit issued its decision in Wi-Fi One, LLC v. Broadcom Corp. holding that that the Supreme Court’s decision in Cuozzo did not overrule the Achates decision and that later Federal Circuit panels remain bound by Achates. Citing Wi-Fi One, the Federal Circuit dismissed CTC’s appeal for lack of jurisdiction. 

In separate concurrences, both Judge O’Malley and Judge Taranto urged the Federal Circuit to review the Achates decision en banc based, at least in part, on language in the Cuozzo opinion. Specifically, Judge O’Malley noted that the policy underlying the Supreme Court’s reasoning in Cuozzo indicates that courts should review institution decisions when the petition is not timely filed under § 315(b). In Cuozzo, the Supreme Court held that Cuozzo’s challenge was barred by the scope of § 314(d) because the claim simply challenged the US Patent and Trademark Office’s (PTO’s) conclusion that the “information presented in the petition” warranted review. By contrast, CTC’s appeal does not relate to the information presented in the petition, but instead challenges the fundamental statutory authority on which Congress has authorized the director to institute an IPR proceeding. The Cuozzo decision did not expressly state whether the scope of § 314(d) applies to the time bar of § 315(b). According to Judge O’Malley, the “strong presumption” in favor of judicial review encourages review of such questions.

Similarly, Judge Taranto opined that the Supreme Court’s opinion in Cuozzo left the scope of § 314(d)’s bar less than clear, as it focused only on the particular PTO determination before it. Taranto pointed out that the requirement of a statutorily proper petitioner, including the time bar of § 315(b), is unrelated to the substance of the allegations of unpatentability analyzed in Cuozzo. Thus, he concluded, the en banc Federal Circuit should consider whether the application of § 315(b) is reviewable.

© 2019 McDermott Will & Emery


About this Author

Rebacca Harker Duttry, McDermott Will Emery, Intellectual Property, Litigation, Lawyer, Attorney

Rebecca Harker Duttry is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Washington, D.C., office.  She focuses primarily on intellectual property, with an emphasis on patent infringement litigation.  Rebecca has litigated a broad range of technologies in the electrical, biotechnological and pharmaceutical arts.  Rebecca has also prepared and prosecuted U.S. patent applications in the pharmaceutical arts.

Rebecca joins McDermott after serving as a judicial clerk for the Honorable S. Jay Plager of the...

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