Federal Circuit Overrules Prior Decision, Holding Time-Bar Determinations Under § 315(b) Reviewable

Wi-Fi One, LLC v. Broadcom Corp., Nos. 2015-1944, -1945, -1946 (Fed. Cir., issued Jan. 8, 2018)

The U.S. Court of Appeals for the Federal Circuit, sitting en banc, held for the first time that time-bar determinations in inter partes review (IPR) proceedings are reviewable on appeal, expressly overruling its panel decision in Achates Reference Publishing, Inc. v. Apple Inc. As a result, patent owners may appeal final written decisions on the ground that an IPR petition was untimely filed. This decision potentially opens the door for appellate review of other institution-stage determinations in appeals from trial proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO).

Previously, the Federal Circuit construed 35 U.S.C. § 314(d) to prohibit appellate review of almost every determination that the PTAB might make at the institution stage of an IPR proceeding. In Wi-Fi One, the Federal Circuit analyzed the Supreme Court’s 2016 opinion in Cuozzo Speed Technologies, LLC v. Lee, which suggested that section 314(d) should not be applied as broadly as the Federal Circuit had been applying it. Despite the narrow holding, Wi-Fi One leaves open the possibility that other initial IPR determinations may be reviewable post-Cuozzo and not barred under section 314(d).

Background Leading to the En Banc Decision

The appeal in Wi-Fi One arose from a group of IPRs initiated in 2013 by petitioner Broadcom. Roughly three years before those IPR petitions were filed, the patent owner had filed suit in federal district court alleging that several defendants had infringed the same three patents. Although Broadcom itself was not one of these defendants, the patent owner argued that Broadcom was in privity with defendants in the district court and that the one-year time bar applied to Broadcom. The PTAB rejected this argument and, in three final written decisions, canceled the challenged claims. When the patent owner raised this argument on appeal, the panel declined to review the PTAB’s decision on the time bar, following Achates.

The En Banc Federal Circuit Overrules Its Precedent

The majority opinion of Wi-Fi One, authored by Circuit Judge Reyna, principally relied on Cuozzo in vacating the PTAB’s decision. Quoting Cuozzo, the Federal Circuit emphasized a “‘strong presumption’ favoring judicial review of administrative action, including the Director’s IPR institution decisions.” Overcoming this presumption requires “clear and convincing” indications of Congressional intent to foreclose judicial review shown by (i) the specific statutory language at issue, (ii) the specific legislative history of the statute or (iii) inferences from the overall statutory scheme.

The court, emphasizing the phrase “under this section” in the statutory text, held that section 314(d) only bars appellate review of determinations “whether to institute IPR as set forth in § 314.” The court found subsection (a) to be the only part of section 314 that addresses substantive issues “that are part of the Director’s determination ‘under this section.’” The Federal Circuit then explained that section 314(a) only identifies the minimum threshold for institution and makes institution discretionary; the court characterized the determination under this section as “only preliminary.”

The court contrasted this determination with section 315(b), which expressly prohibits institution “if the petition is filed more than 1 year after the date on which the petitioner, the real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” According to the majority opinion, section 315(b) imposes a statutory limit on agency authority and is therefore categorically different from the “preliminary procedural requirements stated in §§ 311-13,” which obligate petitioners to provide the PTAB with certain information the PTAB uses to make its determination under section 314.

Differing Views on the Court

While nine judges signed onto the majority opinion, Circuit Judge O’Malley wrote a separate concurrence, and Circuit Judge Hughes authored a dissenting opinion that was joined by three other judges. In Judge O’Malley’s view, the analysis of presumptions and Congressional intent were unnecessary because, unlike section 314(a), which authorizes the USPTO to exercise discretion, section 315(b) imposes a limit on the USPTO’s authority; in her view, the Federal Circuit should review such determinations. The dissenting opinion viewed the majority opinion as inconsistent with Cuozzo and section 314(d). They would have held that a time-bar determination is immune to appellate review because it is a part of the decision to institute under section 314(a).

Conclusion

The Federal Circuit’s decision is narrow, addressing only appellate review of section 315(b) determinations. It remains to be seen whether the Federal Circuit might permit mandamus relief in appropriate cases rather than requiring appeals from final written decisions. It also remains to be seen what other initial determinations may be appealable post-Cuozzo. The court stopped short of deciding “whether all disputes arising from §§ 311-14 are final and nonappealable,” even though much of its reasoning involved contrasting the requirements of those sections with the time bar of section 315(b).

Savvy practitioners will likely take note of Wi-Fi One because appellate review of PTAB determinations has expanded, although the scope of what is reviewable may be limited given the narrow holding in Wi-Fi One.