IP Law Daily Bar on judicial review of PTAB ‘institution’ decisions inapplicable to ‘time bar’ determinations
Monday, January 8, 2018

Bar on judicial review of PTAB ‘institution’ decisions inapplicable to ‘time bar’ determinations

By Mark Engstrom, J.D.

The U.S. Court of Appeals for the Federal Circuit has overruled Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015), a panel decision which found that a "time-bar" determination of the Patent Trial and Appeal Board under 35 U.S.C. §315(b) was a final and non-appealable "institution" decision under §314(d). Because the full court could not identify a "clear and convincing" Congressional intent to prohibit the judicial review of §315(b) time-bar determinations, the court found that those determinations were indeed appealable. The merits of a time-bar appeal filed by appellant Wi-Fi One were therefore remanded to the merits panel for further proceedings. A dissenting opinion was filed by Circuit Judge Todd Hughes—joined by Circuit Judges Alan Lourie, William Bryson, and Timothy Dyk—and a concurring opinion was filed by Circuit Judge Kathleen O’Malley (Wi-Fi One, LLC v. Broadcom Corp., January 8, 2018, Reyna, J.).

In 2013, Broadcom filed three separate petitions for review of U.S. Patent Nos. 6,772,215; 6,466,568; and 6,424,625. At the time, all three patents were owned by Telefonaktiebolaget LM Ericsson. During the pendency of the inter partes review (IPR), however, Ericsson transferred the patents to Wi-Fi One. In response to Broadcom’s petitions, Wi-Fi argued that the PTO Director lacked the authority to institute an IPR under §315(b) because Broadcom was in privity with the defendants in Ericsson’s 2010 infringement action, filed in the Eastern District of Texas, involving the same three patents. According to Wi-Fi, the IPR petitions were time-barred under §315(b) because Ericssson had already asserted infringement claims—in district court, against defendants that were in privity with Broadcom—more than a year before the petitions were filed.

The Board instituted IPR on the challenged claims and found that all of the claims were unpatentable. According to the Board, Wi-Fi failed to show that Broadcom was in privity with the defendants in the 2010 lawsuit, and for that reason, the IPR petitions were not time-barred under §315(b). Wi-Fi appealed, arguing that the time-bar determinations should be reversed or vacated, but a panel of the Federal Circuit found that the time-bar rulings were non-appealable under Achates . Wi-Fi sought rehearing en banc, and the full court granted Wi-Fi’s petition to consider whether Achates should be overruled.

The Federal Circuit noted that, under 35 U.S.C. §315(b), the Director of the USPTO could not institute IPR of a challenged patent if the petition for review was filed more than a year after a complaint for patent infringement was served on the petitioner, real party in interest, or privy of the petitioner. Moreover, a §315(b) decision to institute IPR was final and non-appealable under 35 U.S.C. §314(d). In this case, the question before the Federal Circuit was whether the bar on judicial review of a §314(d) "institution" decision applied to a §315(b) "time-bar" determination.

The court noted and applied the "strong presumption" that favored judicial review of administrative actions, including the PTO Director’s decision to institution IPR. In view of that strong presumption, the court could abdicate judicial review only if Congress had provided a "clear and convincing" indication that it intended to prohibit review. In this case, the Federal Circuit concluded that the statutory language of the America Invents Act (AIA), the legislative history of the Act, and the statutory scheme as a whole lacked a clear and convincing indication of Congress’ intent to bar judicial review of §315(b) time-bar determinations.

Finding no such "clear and convincing indications," the Federal Circuit concluded that the PTO’s time-bar determinations under §315(b) were not exempt from judicial review, and the contrary ruling of Achates was overruled. The decision of the court was limited to the appealability of time-bar determinations under §315(b), however. The court did not decide whether all disputes arising from §§311–314 were final and non-appealable.

Dissent. Circuit Judge Todd Hughes, joined by Circuit Judges Alan Lourie, William Bryson, and Timothy Dyk, wrote separately to express their disagreement with the majority’s narrow reading of the AIA. Congress barred judicial review of decisions to institute IPR in 35 U.S.C. §314(d), the dissent explained, but the majority limited that prohibition to the Director’s assessment of the criteria for instituting IPR, as provided in §314. The majority thus ruled that §314(d) did not apply to other preliminary determinations, such as whether the petition had been timely filed. In the dissent’s view, that overly narrow reading contradicted the statutory language and contravened the Supreme Court’s construction of the same language in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016).

The case is Nos. 2015-1944; 2015-1945; 2015-1946.

Attorneys: Donald Puckett (Nelson Bumgardner PC) and Douglas Aaron Cawley (McKool Smith, PC) for Wi-Fi One, LLC. Dominic E. Massa (Wilmer, Cutler, Pickering, Hale and Dorr, LLP) for Broadcom Corp.

Companies: Wi-Fi One, LLC; Broadcom Corp.

MainStory: TopStory Patent FedCirNews

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