Federal Circuit: Time-Bar Determinations of IPR Petitions Are Appealable

The Federal Circuit overrules its precedent and holds that a determination as to whether a petition is time-barred is reviewable on appeal.

Under 35 U.S.C. § 315(b), a petition for IPR is untimely if it is filed more than one year after the petitioner, or its privy, was served with a complaint alleging infringement of the patent.  35 U.S.C. § 314(d) states that “[t]he determination … whether to institute an inter partes review under this section shall be final and nonappealable.”

In Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015), the Federal Circuit held that § 314(d) prohibited review of the Board’s determination that an IPR petition was not time-barred under 35 U.S.C. § 315(b). Under Achates, a time-bar determination is nonappealable, even if the determination was addressed in a Final Written Decision.

In revisiting this issue en banc, the Federal Circuit in Wi-Fi One, LLC v. Broadcom Corp., Nos. 2015-1944, 2015-1945, 2015-1946, (Fed. Cir. Jan. 8, 2018) has expressly overruled Achates. Now, time-bar determinations under 35 U.S.C. 315(b) are subject to appellate review.

Procedural History

In 2013, Broadcom petitioned for IPR of three patents owned by Wi-Fi One. When responding to the petitions, Wi-Fi One argued that the petitions were untimely under §315(b) because Broadcom was in privity with defendants that were served with a complaint alleging infringement of the patents more that one year before the IPR petitions were filed. Wi-Fi One also filed a motion seeking additional discovery pertaining to its allegations of Broadcom’s relationships with the defendants.

The Board denied Wi-Fi One’s motion for additional discovery. Upon denial of the motion, Wi-Fi One petitioned the Federal Circuit for a writ of mandamus to compel the requested discovery. The Federal Circuit denied the petition for the writ of mandamus.

The Board eventually issued three Final Written Decisions holding the challenged patent claims unpatentable. The Final Written Decisions also addressed Wi-Fi One’s time-bar arguments and found that Wi-Fi One had not shown that the petitions were untimely under 35 U.S.C. § 315(b).

Wi-Fi appealed the Final Written Decisions to the Federal Circuit, arguing that the Board’s time-bar determinations were erroneous. However, the merits panel declined to consider Wi-Fi One’s time-bar arguments, finding that Archates precluded review of the issue. Wi-Fi One petitioned for rehearing en banc.

The Majority Decision

The Federal Circuit granted the petition for rehearing en banc on the following question: “Should this court overrule Archates … and hold that judicial review is available for a patent owner to challenge the PTO’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter parties review?”

The majority decision began its analysis noting that the court applies a “strong presumption” of administrative review of administrative actions, including decisions to institute IPR. In light of this presumption, the majority stated that it will abdicate judicial review only when Congress provides a “clear and convincing” indication that it intended to prohibit review.

In analyzing the statutory language, the majority emphasized that § 314(d) states that “[t]he determination by the Director whether to institute an inter parties review under this section shall be final and nonappealable.” While § 314(a) defines the threshold for instituting IPR in terms of patentability, the majority found that § 315(b) is unrelated to a patentability assessment. Accordingly, the majority reasoned that the statutory language did not indicate that Congress intended to prohibit review of time-bar determinations.

The majority also analyzed the legislative history and “statutory scheme” of the AIA in view of the Supreme Court’s holding in Cuozzo Speed Tech’s, LLC v. Lee, 136 S. Ct. 2131 (2016). Relying on statements in Cuozzo, the majority concluded that § 314(d)’s prohibition of review was limited to only “determinations closely related to the preliminary patentability determination” or “the exercise of discretion not to institute.” Because a time-bar decision is not such a determination, the majority found that there was no clear and convincing indication that Congress intended to prohibit review of time-bar determinations.

Accordingly, the majority expressly overruled Achates and held that time-bar determinations under § 315(b) are not exempt from judicial review. The majority noted that the decision does not address whether all disputes arising from §§ 311-14 are final and nonappealable. Additionally, the majority decision does not indicate whether a party must wait for a Final Written Decision before it appeals a time-bar determination or whether a time-bar determination is properly the subject of a petition for a writ of mandamus.

The case will now be remanded back to the original merits panel to review the issues regarding the Board’s time-bar determination.