Overruling Achates: PTAB Time-Bar Decisions Are Reviewable
In an en banc decision, the US Court of Appeals for the Federal Circuit overruled its previous decision in Achates Reference Publishing v. Apple (IP Update, Vol. 18, No. 10) and found that the bar on judicial review of institution decisions under 35 USC § 314(d) does not apply to decisions rendered by the Patent Trial and Appeal Board (PTAB) on whether an inter partes review (IPR) proceeding is time-barred under 35 USC § 315(b). Wi-Fi One, LLC v. Broadcom Corp., Case Nos. 2015-1944; -1945; -1946 (Fed. Cir., Jan. 8, 2018) (en banc) (Reyna, J, joined by Prost, CJ, and Newman, Moore, O’Malley, Wallach, Taranto, Chen and Stoll, JJ) (O’Malley, J, concurring) (Hughes, J, dissenting, joined by Lourie, Bryson and Dyk, JJ).
An institution decision made by the PTAB in an IPR proceeding is final and non-appealable under 35 USC § 314(d). Under § 315(b), an IPR is time-barred and thus may not be instituted if the petition requesting the proceeding is filed more than one year after the date on which the petitioner, a real party in interest or a privy of the petitioner is served with a complaint alleging infringement of the patent. A number of factors are relevant in determining whether a party is a real party or is in privy with another party. For example, one factor that may be considered is whether the non-party to the IPR proceeding exercised or could exercise control over a party’s participation in the IPR proceeding.
In its earlier Achates decision, the Federal Circuit found that a PTAB determination as to whether a petition is time-barred is final and non-appealable. Subsequently, the Supreme Court of the United States decided in Cuozzo Speed Technologies that the PTAB’s ruling on whether a petition was pleaded with particularity is not reviewable (IP Update, Vol. 19, No. 7). The Supreme Court left open the possibility of judicial review for decisions that are not closely tied to the application and interpretation of statutes related to the institution decision.
In this case, the en banc Federal Circuit revisited and overruled Achates, noting “the strong presumption favoring judicial review of administrative actions” and the absence of clear and convincing congressional intent to bar the review. The majority also found that its decision was consistent with the statutory scheme “as understood through the lens of” the Supreme Court’s decision in Cuozzo. Specifically, the majority found that the time-bar is not closely tied to the institution decision and thus falls within one of the examples of potential judicial review outlined in Cuozzo.
Judge O’Malley concurred. Her concurrence turned on the distinction between the Director’s authority to exercise discretion when reviewing the adequacy of a petition to institute, and the Director’s authority to undertake such a review in the first instance. She found that the time-bar is directed to a procedural right that prevents an agency from acting outside its statutory limits and is unrelated to the agency’s core statutory function of determining whether claims are patentable.
Judge Hughes, joined by Judges Lourie, Bryson and Dyk, dissented. The dissent found that the time-bar is closely tied to and is part of the PTAB’s institution decision, and thus argued that time-bar determinations should also be final and non-appealable.