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On January 4, 2017, the Federal Circuit agreed to reconsider en banc a panel decision in Wi-Fi One, LLC v. Broadcom Corp., 837 F.3d 1329 (Fed. Cir. 2016), which held that a patent owner cannot appeal a determination by the Patent Trial and Appeal Board (PTAB) that an inter partes review (IPR) petitioner is not time-barred under 35 U.S.C. § 315(b) to challenge the patent.

The PTAB cannot institute an IPR proceeding if the petitioner, or the real party-in-interest or privy of the petitioner, was served with a complaint more than one year before the IPR petition was filed.  35 U.S.C. § 315(b).  PTAB determinations “whether to institute an inter partes review” are “final and nonappealable.” 35 U.S.C. § 314(d).  In view of these statutory provisions, the Federal Circuit has consistently held that parties may only appeal the PTAB’s final written decision under 35 U.S.C. § 318(a) addressing the patentability of any patent claim challenged in the proceeding.  See, e.g., St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373, 1375 (2014).

In Wi-Fi One, the patent owner (Wi-Fi One) argued that the PTAB should not have instituted the IPR proceeding because the petitioner (Broadcom) was in privity with a time-barred district court litigant.  The Federal Circuit panel, however, held that the patent owner could not appeal the PTAB’s decision to institute the proceeding, including the PTAB’s determination that the petitioner was not time-barred under § 315(b).  The panel indicated that it was bound by the Federal Circuit’s earlier decision in Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015), which held that § 314(d) “‘prohibits this court from reviewing the Board’s determination to initiate IPR proceedings based on its assessment of the time-bar of § 315(b), even if such assessment is reconsidered during the merits phase of proceedings and restated as part of the Board’s final written decision.’”  Wi-Fi One at 1333 (quoting Achates at 658).

Subsequent to Achates, the Supreme Court held in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), that § 314(d)’s bar against the appealability of institution decisions “applies where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statues related to the Patent Office’s decision to initiate inter partes review.”  Id. at 2141.  In Wi-Fi One, the panel held that Cuozzo did not disturb Achates’ reasoning that the PTAB’s interpretation of the provisions of § 315(b) in an institution decision is nonappealable.  Id. at 1334-35.

In granting en banc rehearing in Wi-Fi One, the Federal Circuit has ordered the parties and any amici curiae to brief the following question:

Should this court overrule Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) 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 partes review?

January 4, 2017 Order at 2.  The en banc order vacates the panel decision in Wi-Fi One.

The Federal Circuit’s grant of en banc rehearing in Wi-Fi One is significant because several justices of the Federal Circuit have openly challenged the Achates ruling.  In a concurring opinion in Wi-Fi One, Judge Reyna emphasized that Achates “should be reconsidered by the en banc court,” and argued that Cuozzo permits appellate review of whether the PTAB “ignored, or erred in the application of, the statutory time bar.”  Wi-Fi One at 1340-41.

In Click-to-Call Techs. v. Oracle Corp., Appeal No. 15-1242 (Fed. Cir. Nov. 27, 2016), a Federal Circuit panel dismissed the patent owner’s appeal of the PTAB’s determination that the IPR petitioner was not time-barred under § 315(b), noting that it was “bound by the court’s previous decisions in Achates and Wi-Fi One.”  Click-to-Call, 2016 WL 6803054 at *2.  Interestingly, however, Judges O’Malley and Taranto both filed concurring opinions in Click-to-Call to recommend en banc review of whether the Federal Circuit has jurisdiction to review the PTAB’s interpretation of § 315(b) in institution decisions.  Judge Reyna argued that “the Supreme Court’s language in Cuozzo leaves room for us to question our reasoning in Achates and I suggest that we do so en banc.” Click-to-Call at *2.  Judge Taranto argued that “[a]t present, it appears to me that Achates is incorrect and that en banc review is warranted.” Id. at *9.

Any amicus brief supporting Wi-Fi One’s position or supporting neither position must be filed by February 23, 2017.  Any amicus brief supporting Broadcom’s position must be filed by March 27, 2017.  The court also invited the PTO to file an amicus brief.