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Recently, the en banc Federal Circuit held that a determination by the Patent Trial and Appeal Board (PTAB) on whether a petitioner is time-barred from challenging a patent in an inter partes review (IPR) is judicially reviewable. Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (2018). In doing so, the en banc Federal Circuit overruled its earlier precedent in Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015), which held that the PTAB’s time-bar determinations in institution decisions are not appealable due to the “No Appeal” provision of 35 U.S.C. § 314(d).

Applicable Statutory Provisions

The PTAB cannot institute an IPR proceeding for a patent if the petitioner, or the real party-in-interest or privy of the petitioner, was served with a complaint for infringement of the patent more than one year before the IPR petition was filed. 35 U.S.C. § 315(b). Under the “No Appeal” provision of § 314(d), the PTAB’s determination “whether to institute an inter partes review” is “final and nonappealable.”

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