One January 8, 2018, the Court of Appeals of the Federal Circuit issued Wi-Fi One, LLC v. Broadcom Corp.,[1] in which the en banc panel held the PTAB decision to institute or not an inter partes review based on whether the petition was timely can be appealed through judicial review. Specifically, the issue was whether the time-bar provision under 35 U.S.C. §315(b) is final and nonappealable under 35 U.S.C. §314(d). The Wi-Fi One court held that it was not. In doing so, the majority overruled Achates Reference Publishing, Inc. v. Apple Inc.[2]
The facts are this case are as such. Telefonaktiebolaget LM Ericsson filed a patent infringement lawsuit in 2010 against several defendants for infringement of U.S. Patent Nos. 6,772,215, 6,466,568 and 6,424,625.[3] In that case, filed in the Eastern District of Texas, a jury found in favor or Ericsson, which was later affirmed-in-part on appeal to the Federal Circuit.[4] Subsequently, Broadcom Corp., which was not a defendant in the original patent infringement district court action, filed three separate IPR petitions of the ‘215, ‘568, and ‘625 patents in the PTAB.[5] Ericsson then assigned these three patents to Wi-Fi One.[6] Wi-Fi One argued in its responses that because Broadcom acted in privity with the district court action defendants, the IPR petitions were time-barred under §315(b). The PTAB rejected this argument, and instituted IPRs, finding the challenged claims in the three patents unpatentable.[7] Wi-Fi One appealed, and a Federal Circuit panel affirmed, holding that the Achates rule did not allow for a §314(d) institution decision appeal.[8] Wi-Fi One then petitioned for a rehearing en banc.
35 U.S.C. §314(d) reads:
The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.
The relevant parts of 35 U.S.C. §315(b) reads:
An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent . . . .
The majority opinion was written by Judge Reyna. Reyna explained that a plain meaning reading of §314(d) is that it is limited to determinations to institute an IPR under §314(a).[9] 35 U.S.C. §314(a) reads:
(a) Threshold. The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.[10]
That is, Reyna further explained, §314(d) only applies to a determination of the threshold issue of whether there is a reasonable likelihood that the petitioner would prevail on the challenged claims. Put another way, the “final and nonappealable” language only applies to the merits of the IPR petition, that is, the underlying substantive issue of whether or not the challenged claims are patentable, and does not apply to any other argument raised either in the petition or the patent owner’s response.
Reyna noted:
We find no clear and convincing indication in the specific statutory language in the AIA, the specific legislative history of the AIA, or the statutory scheme as a whole that demonstrates Congress’s intent to bar judicial review of §315(b) time-bar determinations.[11]
The statutory scheme supports this notion, postulated Judge Reyna, and is supported by the Cuozzo standard that requires determinations must be “closely related” to §314(a).[12]
Judge O’Malley concurred. Her belief, however, is that this case’s rationale is much simpler than the one Judge Reyna presented. Judge O’Malley noted the difference between a PTAB post-grant petition (i.e., IPR, PGR, CBM, or derivation) and the act of institution itself. Because §315(b) is directed toward the Director and not the petitioner, the time bar is directed at the USPTO.[13]
Section 314(d)’s bar on appellate review is directed to the Director’s assessment of the substantive adequacy of a timely filed petition. Because §315(b)’s time bar has nothing to do with the substantive adequacy of the petition and is directed, instead, to the Director’s authority to act, §314(d) does not apply to decisions under that provision.[14]
Judge Hughes dissented, joined by Judges Lourie, Bryson, and Dyk. Judge Hughes found that the majority’s holding was a very narrow reading of §314(d), and “not only contradicts the statutory language, but is also contrary to the Supreme Court’s construction of that language in Cuozzo.”[15] Judge Hughes challenged the majority’s notion that Congressional intent was vague or absent on this issue.
Congress’s intent to prohibit judicial review of the Board’s IPR institution decision is clear and unmistakable. Section 314(d) states “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable. (emphasis added.) The statute calls out a specific agency determination, and expressly prohibits courts from reviewing that decision. “Absent persuasive indications to the contrary, we presume Congress says what it means and means what it says.” Simmons v. Himmelreich, 136 S. Ct. 1843, 1848 (2016).[16]
The issue of the IPR petition’s timeliness under §315(b) goes hand-in-hand with the USPTO’s decision to institute an IPR, and ultimately is barred from appeal.[17]
This case may be further petitioned for certiorari to the U.S. Supreme Court, so its final outcome may not be known for some time. However, in the near term, the case is still good law in the Federal Circuit, and it may encourage more arguments in the petition and response to institute an IPR (or any post-grant proceeding for that matter) outside of substantive arguments challenging the validity of the claims. This would include constitutional issues, other procedural grounds, or misconduct issues, all in order for the institution to be appealable to the Federal Circuit.
[1] 878 F.3d 1364 (Fed. Cir. 2018), rehearing granted, 851 F.3d 1241 (Fed. Cir. 2017), rev’g 837 F.3d 1329, 1333, 1334-35 (Fed. Cir. 2016) and 668 F. App’x 893 (Fed. Cir. 2016).
[2] 803 F.3d 652, 658 (Fed. Cir. 2015).
[3] Wi-Fi One, supra (slip op. at 11-12).
[4] See Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1203 (Fed. Cir. 2014).
[5] Wi-Fi One, supra (slip op. at 12). See also Broadcom Corp. v. Wi-Fi One, LLC, Nos. IPR2013-00601, 2015 WL 1263008 (P.T.A.B. Mar. 6, 2015), IPR2013-00602, 2015 WL 1263009 (P.T.A.B. Mar. 6, 2015), IPR2013-00636, 2015 WL 1263010 (P.T.A.B. Mar. 6, 2015).
[6] Id.
[7] Id. (slip op. at 13).
[8] Wi-Fi One, 837 F.3d at 1340.
[9] Wi-Fi One, supra (slip op. at 15-16).
[10] Id. (slip op. at 16).
[11] Id. (slip op. at 15).
[12] Id. (slip op. at 17-18). See also Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131, 2142 (2016).
[13] Id. (slip op. at 3) (O’Malley, J., concurring).
[14] Id. (slip op. at 4).
[15] Id. (slip op. at 3) (Hughes, J., dissenting).
[16] Id. (slip op. at 4).
[17] Id. (slip op. at 5).