The recent decision in Wi-Fi One v. Broadcom, has presented an interesting opportunity for the Federal Circuit to reconsider its jurisprudence on the reviewability of the PTO’s institution decision post-Cuozzo and in particular the application of the time bar set forth in 35 U.S.C. § 315(b). The language of 35 U.S.C. § 315(b) states:
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 time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). [emphasis added]
Subsection (c) states:
If the Director institutes an inter partes review, the Director in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. [emphasis added]
However, in 37 CFR § 42.122(b), the PTO has interpreted the language of §§ 315(b) and (c) in a way that allows it to ignore the 1 year time bar by joining the out-of-time petition with another petition that was timely filed: The 1 year bar of §315(b) ”shall not apply when the petition is accompanied by a request for joinder.” [emphasis added]
Thus, rather than focusing on the language of the statutes which merely permits “a request for joinder” to be filed outside the 1 year period and requires that the petition be “properly filed,” the PTO routinely sets aside the 1 year bar through the procedural mechanism of joinder. There is significant doubt that Congress intended this result when it enacted §315(b). The bar serves at least two important purposes: First it avoids the institution of an inter partes review when a district court case has been ongoing for more than 1 year fulfilling the legislation’s purpose of providing an alternative to litigation rather than a second bite at the apple; and, second, it avoids further harassment of the patentee. The PTO’s interpretation, however, frustrates both purposes of the time bar.
To date, the Federal Circuit has refused to review this practice based on 35 U.S.C. §314(d). Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) (in IPRs2013-00080 and -00081, dismissing a §315(b) time bar challenge to institution for lack of jurisdiction because of 314(d)). See also, e.g., Synopsys, Inc. v. Mentor Graphics Corp. v. Lee, Director, 814 F.3d 1309 (Fed. Cir.) (in IPR2012-00042, reaffirming the Achates holding that decisions under §315(b) are not appealable as they are part of institution determination); MCM Portfolio v. Hewlett Packard, 812 F.3d 1284 (Fed. Cir.) (in IPR2013-00207, citing Achates, and refusing to review §315(b) bar because of §314(d)).
When the Supreme Court decided Cuozzo v. Lee, the Court opened the door for the Federal Circuit to revisit this and other issues decided as part of the institution decision. See 136 S. Ct. 2131, 2141-42 (2016) (deciding only that the institution itself is unreviewable under §314(d) and not “enabl[ing] the agency the agency to act outside its statutory limits”). However, given its first opportunity to do so, the majority declined to do so when the 1 year time bar issue turned on whether unnamed defendants in an ongoing litigation — defendants who would have been time barred under §315(b)– were privies with the petitioner Broadcom. See Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1944, slip op. at 5-9 (Fed. Cir. Sept. 16, 2016).
Judge Reyna concurred in the result, finding that Wi-Fi had not established that Broadcom was in privity with the time-barred defendants nor a real party in interest in the subject litigation. However, he disagreed that the court did not have jurisdiction to address the time bar issue. Noting that “Achates renders § 315(b) toothless,” Judge Reyna’s position is that: “A final decision concerning the time bar set forth in 35 U.S.C. §315(b) should be subject to review.” Slip op. at 1-2 (dissent). In his analysis, the Judge turned to the Supreme Court opinion in Cuozzo: “Cuozzo explicitly notes that its holding does not ‘enable the agency to act outside its statutory limits’ and that such ‘shenanigans’ are properly reviewable. 136 S. Ct. at 1241-42. That admonition compels us to review allegations that the Board has ignored, or erred in the application of, the statutory time bar.” Id. at 3. In Judge Reyna’s view the Federal Circuit should reconsider Achates en banc. It is only time until a patent owner requests such review. In view of Cuozzo v. Lee, perhaps the Federal Circuit will take Judge Reyna’s suggestion and address the significant loophole created by the PTO’s statutory interpretation.