The Federal Circuit has ordered en banc review to consider whether the timeliness of a petition for inter partes review (IPR) can be appealed following the Patent Trial and Appeal Board’s decision to institute review. Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1944 (Fed. Cir. Jan. 4, 2016)(granting petition for rehearing en banc).
One unresolved issue in AIA post grant proceedings is the circumstances that allow a party to appeal the PTAB’s decision to institute review. For IPR proceedings, 35 U.S.C. § 314(d) states that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” In Cuozzo Speed Technologies, LLC v. Lee, ___ U.S. ___, 136 S. Ct. 2131 (2016), the Supreme Court ruled that Section 314(d) precludes “mine run” challenges to PTAB decisions to institute, but leaves the door open for appeals based on due process or other constitutional concerns, PTAB actions outside its statutory limits, or other “shenanigans.” Id. at 2141-42.
One limitation on IPR proceedings is that the petition for review must be filed no later than one year after the petitioner (or the real party in interest, or party in privy of the petitioner) is served with a complaint alleging infringement of the challenged patent. 35 U.S.C. § 315(b). In an earlier case, Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015), the Federal Circuit ruled that Section 314(d) prevents the court from hearing an appeal from the PTAB’s institution decision based on whether the petition was time-barred. Following Cuozzo, the court ruled in a panel decision that the Supreme Court did not implicitly overrule Achates. Wi-Fi One, LLC v. Broadcom Corp., 837 F.3d 1329 (Fed. Cir. 2016).
In its most recent order, the court will consider en banc the following question:
Should this court overrule Achates Reference Publishing, Inc. v. Apple Inc.[,] 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?
The court’s decision will establish whether a party may appeal the PTAB’s decision to initiate review in an IPR based on its determination whether the petition is time-barred under Section 315(b). In addition, it is likely that the decision will help further define other situations where appeals remain available after Cuozzo.
