Share, Linked In, , , Google Plus

Print

Posted in:

Two More Federal Circuit Judges Question Achates and Wi-Fi One

Click-To-Call Technologies, LP, v. Oracle Corporation, 2015-1242 (Fed. Cir. Nov. 17, 2016)

In Click-To-Call, two Federal Circuit judges called for en banc review of the Achates and Wi-Fi One decisions holding that 35 U.S.C. § 314(d)[i] precludes appellate review of a Board’s IPR determination underlying institution that the petitioner could overcome the one-year time bar under 35 U.S.C. § 315(b).[ii]

Concluding that it is bound by Wi-Fi One, LLC v. Broadcom Corp., No. 15-1944, 2016 U.S. App. LEXIS 16942, at *26 (Fed. Cir. Sept. 16, 2016), the Click-To-Call panel begrudgingly reinstated its earlier judgment and dismissed for lack of jurisdiction Click-to-Call’s appeal of the Patent Trial and Appeal Board’s decision to institute inter partes review proceedings brought by Oracle Corporation (and others), which CTC had argued were time-barred under § 315(b).

The Federal Circuit originally dismissed CTC’s appeal based on Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015), which held that 35 U.S.C. § 314(d)[iii] precluded appellate review of a Board’s IPR determination underlying its institution decision that found the time bar of § 315(b).

CTC’s petition for writ of certiorari was granted, and the Federal Circuit’s decision was vacated and remanded by the Supreme Court for further consideration in light of Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016).

In supplemental briefing, CTC argued that Cuozzo implicitly overruled Achates. CTC argued that Cuozzo held that § 314(d) bars appeal challenges that are “closely related” to the Board’s substantive patentability determination under § 314(a)[iv] but did not bar appeals based on the Board’s interpretation of § 315(b) because § 315(b) is not closely related to the Board’s decision to institute under § 314(a) but rather an independent jurisdictional bar on the Board’s actions.

Oracle and the PTO argued that Cuozzo did not overrule but rather supported Achates, quoting Justice Alito’s separate opinion that “the Court says that such questions [including the petition’s timeliness] are unreviewable.” Cuozzo, 136 S. Ct. at 2155 (Alito, J., concurring in part and dissenting in part).

In a per curium decision the Federal Circuit held that it was bound by intervening precedent, Wi-Fi One, LLC v. Broadcom Corp., No. 15-1944, 2016 U.S. App. LEXIS 16942, at *26 (Fed. Cir. Sept. 16, 2016), which reaffirmed Achates and concluded that it was not overruled by Cuozzo.

In her concurrence Judge O’Malley expressed disagreement with Achates and suggested that it be reconsidered en banc. She opined that § 315(b) is a jurisdictional statute reviewable under § 706(2)(C) of Administrative Procedures Act, 5 U.S.C, and pointed to a PTO regulation, 37 C.F.R. § 42.3(b), that identifies time-period requirements as jurisdictional. She did not think Congress provided the clear and convincing indications needed to overcome the presumption that § 315(b) determinations are reviewable.

Judge Taranto agreed with Judge O’Malley in his concurrence, adding that “the rule of decision favoring reviewability (where a clear contrary showing is not made) should apply in determining the scope of any statutory provision asserted to create an exception, not just in determining whether the provision is an exception at all.” He pointed to Cuozzo’s suggestion that the question of reviewability depends on the determination at issue and its relationship to § 314(d), and specific language in Cuozzo to the effect that § 314(d) does not bar review of agency actions to determine if they are “in excess of statutory jurisdiction” under 5 U.S.C. § 706(2)(C). He further distinguished the issue of timeliness under § 315(b) as completely unrelated to patentability, unlike § 312(a)(3)’s pleading rule at issue in Cuozzo, and other preliminary determinations held to be unreviewable.[v]

Judges O’Malley and Taranto make compelling points, and we should know shortly whether the Federal Circuit will reconsider its Achates and Wi-Fi One decisions en banc. Wi-Fi filed its petition for rehearing on October 17th and Broadcom filed its response on November 18th.

[i] Section 314(d) provides, “The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”

[ii] Section 315(b) provides, in relevant part, “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.”

[iii] Section 314(d) provides, “The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”

[iv] Section 314(a) provides, “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.”

[v] The third judge on the panel was Chief District Judge Stark, sitting by designation.