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Wi-Fi One, LLC v. Broadcom Corp – Federal Circuit Holds that PTAB Time-Bar Rulings Are Appealable

In Wi-Fi One, the Federal Circuit held en banc that time-bar determinations by the PTAB under      § 315(b) are appealable and remanded the associated IPRs for further proceedings pertaining to the time-bar issue.

Appeals from IPR decisions of the PTAB are limited in scope by § 314(d), which states that “the determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”  The appropriate scope of § 314(d) has now been reconsidered by the Federal Circuit in light of the Supreme Court’s decision in Cuozzo Speed Technologies , LLC v. Lee (2016).  More specifically, the question presented for the en banc rehearing by the Federal Circuit was whether a PTAB determination under § 315(b), which states that “[a]n 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,” is subject to judicial review.

By way of background, Ericsson filed a complaint against multiple parties in district court for infringement of three patents in 2010. Importantly, Broadcom, the appellee, was not a defendant in the district court litigation.  In 2013, Broadcom filed three separate IPRs of the three patents-at-issue.  During the pendency of the IPRs, Ericsson transferred ownership of the three patents to Wi-Fi One.  In response to Broadcom’s petitions, Wi-Fi One argued that the IPR petitions were time-barred under § 315(b) because Broadcom was in privity with multiple parties in the district court litigation where the patents-at-issue were asserted more than a year prior to the filing of the petitions.   The PTAB denied Wi-Fi One’s motion for discovery regarding the relationship between Broadcom and the multiple defendants, held that the IPRs were not time-barred under § 315(b), and ultimately found that the challenged claims were unpatentable.  Wi-Fi One appealed the Final Written Decisions of the IPRs, arguing, among other things, that the PTAB’s time-bar determinations should be reversed or vacated.  The initial panel of the Federal Circuit held that the time-bar determinations were nonappealable.

Sitting en banc, the Federal Circuit held that time-bar determinations by the PTAB under § 315(b) are appealable.  In deciding this issue, the Federal Circuit relied on the strong presumption favoring judicial review of administrative actions and did not find any clear and convincing indication in the 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 time-bar determinations.  The Federal Circuit explained that the natural reading of § 314(d) restricts reviewability to determinations by the Director whether to institute IPR “under this section,” that is, as set forth in § 314.  In accordance with Cuozzo, the Federal Circuit noted that such determinations were closely related to the preliminary patentability determination or the exercise of discretion not to institute.  The Federal Circuit stated that time-bar determinations have nothing to do with patentability merits or discretion not to institute.   Rather, the Federal Circuit explained that time-bar determinations set limits on the Director’s authority to institute.  Accordingly, the Federal Circuit held that time-bar determinations are not “closely related” to the institution decision addressed in § 314(a), and therefore are not subject to § 314(d)’s bar on judicial review.

While the Federal Circuit makes clear that this holding applies only to the review of § 315(b) time-bar determinations, it will be interesting to see whether this case becomes a basis for further broadening of the scope of permissible challenges  to PTAB institution decisions.  For example, issues unrelated to preliminary patentability determinations or the exercise of discretion not to institute may be deemed appropriate for appeal.