United States: PTAB's Time Bar Determinations Are Reviewable By The Federal Circuit

In Wi-Fi One, LLC v. Broadcom Corporation, an en banc panel of the Federal Circuit decided on January 8, 2018, that the PTAB's application of the 35 U.S.C § 315(b) time bar to institution of inter partes review (IPR) proceedings is reviewable on appeal. The decision overrules Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015), which held to the contrary. The decision is important because, in the context of an appeal of a PTAB final written decision, patent owners may now raise the issue of whether an IPR was improperly instituted due to the § 315(b) time bar.

What is this Case About?

We previously explained the pertinent facts here. In short, the patent owner (Wi-Fi One, LLC) argued that the IPR petitioner (Broadcom Corporation) was in privity with entities accused (and eventually adjudged) in parallel district court litigation of infringing the challenged patent. Those entities, the patent owner argued, would have been time-barred from seeking IPR under section 315(b). The patent owner argued that the petitioner, alleged to be in privity with those litigants, is similarly barred. In December of 2013, the patent owner unsuccessfully sought discovery to prove the petitioner's privity with the time-barred district court litigants. Thereafter the patent owner unsuccessfully petitioned a motions panel of the Federal Circuit for mandamus relief. Discovery denied, the PTAB eventually issued a final written decision canceling the claims of the challenged patent. On appeal, in 2016, a three-judge merits panel of the court affirmed the PTAB's judgment, refusing to review the patent owner's time-bar challenge as foreclosed by Achates. Wi-Fi One, LLC v. Broadcom Corp., 837 F.3d 1329, 1333 (Fed. Cir. 2016). The en banc court vacated this panel decision when it granted the patent owner's petition for rehearing, 851 F.3d 1241 (Fed. Cir. 2017) (en banc order (discussed here)).

What did the Federal Circuit Say?

A nine-judge majority of the en banc court held that the PTAB's time-bar determinations are appealable, and the court therefore "remand[ed] for the [original three-judge] panel to consider in the first instance the merits of [the] time-bar appeal." Slip Op. at 21. In arriving at this decision, the majority found no indication in the statutory language or legislative history that Congress intended to bar judicial review of the PTAB's time-bar determinations. Id. at 15. Further, the majority found nothing in the Supreme Court's decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), foreclosing this type of review. Slip Op. at 18–19. 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," and the "time bar is such an issue." Id. at 20–21 (citing cases).

One circuit judge wrote a concurrence to emphasize the PTAB's time-bar determinations are not discretionary and therefore immune from judicial review, but instead concern the authority to undertake the review in the first instance. Judicial review of the PTAB's time-bar determinations would, according to this judge, "prevent the agency from '[a]cting outside its statutory limits,' one of the categories of 'shenanigans' envisioned by the majority in Cuozzo." Concurring Slip Op. at 7 (quoting Cuozzo, 136 S. Ct. at 2141–42).

Four judges dissented, taking the view that, under the Supreme Court's Cuozzo decision, 35 U.S.C. § 314(d) bars judicial review of the PTAB's time-bar determinations because the statute prohibits judicial review of "'questions that are closely tied to the application and interpretation of statutes related to the Patent Office's decision to initiate inter partes review.'" Dissenting Slip Op. at 4–5 (citing Cuozzo, 136 S. Ct. at 2139).

The differences between the four-judge dissent and the nine-judge majority could hardly be more clear. The dissent considers the § 315(b) time bar to be a statute related to the Patent Office's decision to initiate inter partes review, whereas the majority does not. The dissent believes the statutory scheme clearly bars judicial review, whereas the majority believes the statute is reasonably susceptible to an interpretation permitting judicial review. The dissent believes "Congress's intent to prohibit judicial review is clear and unmistakable," whereas the majority is not aware of "any specific legislative history that clearly and convincingly indicates congressional intent to bar [such] review." And both the dissent and the majority believe Cuozzo supports their views!

Was the Majority's Decision Correct?

While the Supreme Court's Cuozzo decision was pending, another patent owner, Click-to-Call Technologies, had already petitioned the Supreme Court to review the Federal Circuit's 2015 dismissal of its appeal of a PTAB final written decision where the PTAB decided the statutory time bar did not apply. Click-to-Call Techs., LP v. Oracle Corp., 622 F. App'x 907 (Fed. Cir. 2015) (per curiam). A week after its Cuozzo decision, the Supreme Court granted Click-to-Call's petition, vacated the Federal Circuit's dismissal, and remanded the case for the Federal Circuit's reconsideration in view of Cuozzo. Click-to-Call Techs., LP v. Oracle Corp., 136 S. Ct. 2508 (Mem) (2016). We discussed the Click-to-Call case here and here. In granting the petition and vacating the Federal Circuit's dismissal, the Supreme Court may have signaled judicial review is proper. But to ensure years of confusion, the Court instructed the Federal Circuit to interpret the Cuozzo decision instead of simply deciding the Click-to-Call case on its merits. Part of the confusion lies in how to determine what constitutes appealable "shenanigans" rather than something closely related to the institution decision under § 314. The Cuozzo decision cannot be sufficiently clear if there is a 9-4 split at the Federal Circuit. Perhaps, if asked (again), the Supreme Court will tell us if the majority in Wi-Fi One is correct.

What's Next?

So here we are four years after Wi-Fi One unsuccessfully moved the PTAB for discovery that may prove Broadcom's privity with the time-barred district court litigants and therefore establish that the PTAB lacks authority, under section 315(b), to administer inter partes review. Absent Supreme Court review, the appeal will return to the merits panel. That panel may well remand the matter to the PTAB, which in turn may permit discovery. Resolution of the particular dispute between the Wi-Fi One litigants seems far from over. And the same renewed path may await the Click-to-Call litigants if the Federal Circuit grants the patent owner's petition for rehearing long pending in that appeal. Current and prospective AIA trial participants should expect a more conscientious PTAB whenever issues arise relating to statutory limits on its authority to act, and a PTAB that takes even more care in articulating reasoning supporting its decisions on those issues.

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