• An Arrow in the Quiver of Patent Owners: Federal Circuit Decides That Not All Aspects of PTAB’s Institution Decisions Are "Final and Nonappealable"
  • January 16, 2018 | Authors: Ann G. Fort; Peter G. Pappas; Joshua B. Aronson
  • Law Firm: Eversheds Sutherland (US) LLP - Atlanta Office
  • The US Court of Appeals for the Federal Circuit has decided that patent owners may appeal the decisions of the Patent Trial and Appeal Board (PTAB) regarding the timeliness of inter partes review petitions under 35 U.S.C. § 315(b).

    Section 315(b) provides 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.”

    In addition to this “time-bar” rule, the statute also provides at section 314(d) that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”

    This “final and nonappealable” provision, however, does not apply to the time-bar of section 315(b), according to the Federal Circuit. The Federal Circuit, sitting en banc, ruled by a vote of 9 to 4 in Wi-Fi One, LLC v. Broadcom Corp. that the “the time-bar determinations under § 315(b) are appealable” due in part to the “‘strong presumption’ favoring judicial review of administrative actions” explained by the US Supreme Court in Cuozzo, and the lack of any “clear and convincing indication of… congressional intent” to prohibit judicial review of the time-bar provision (Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131, 2140 (2016)).

    This decision overturns the Federal Circuit’s earlier holding in Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015), thereby providing Wi-Fi One a chance to demonstrate to a panel of the Federal Circuit that the time-bar provision of section 315(b) should have precluded the acceptance of three inter partes review petitions filed by Broadcom.

    Underlying Issue: Was Broadcom “in privity” with 2010 defendants?

    Broadcom filed three separate petitions in 2013 for inter partes review of three patents owned originally by Telefonaktiebolaget LM Ericsson (Ericsson). Ericsson previously filed, in 2010, a complaint for infringement of the three patents by several defendants, but not Broadcom. Broadcom, however, was “in privity” with one or more of the defendants, according to the patent owner’s responses filed by Wi-Fi One, who became the owner of the three patents during the pendency of the inter partes reviews.

    The inter partes reviews resulted in final written decisions explaining that all of the challenged claims were unpatentable, and that the petitions were not time-barred because Wi-Fi One had not demonstrated that Broadcom was in privity with the defendants sued by Ericsson prior to transferring ownership of the patents to Wi-Fi One.

    Wi-Fi One, therefore, appealed the final written decisions and, as explained above, successfully argued that the Federal Circuit should remand the PTAB’s time-bar determinations for consideration by a panel.

    Could there be more appealable institution decisions?

    Although only the time-bar provision was at issue in this opinion, the Federal Circuit explicitly noted that “[w]e do not decide today whether all disputes arising from §§ 311-314 are final and nonappealable,” which suggests that other determinations regarding the institution of inter partes reviews may be appealable despite the “final and nonappealable” mandate of section 314(d).