September 16, 2016

PTAB Decision to Institute Despite Alleged § 315 Time Bar is Not Reviewable

By Bryan K. Wheelock, Principal

Wi-Fi One LLC argued that Broadcom Corp. was barred from petitioning for inter partes review under 35 U.S.C. § 315(b)  because it was in privity with a time-barred district court litigant.  To determine whether a petitioner is in privity with a time-barred district court litigant, the Board conducts a flexible analysis that “seeks to determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.”  Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012).

The Federal Circuit also rejected Wi-Fi’s substantive challenges.

In Achates, the Federal Circuit held that 35 U.S.C. § 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 argued that the Supreme Court’s recent decision in Cuozzo Speed Technologies,LLC v. Lee, implicitly overruled Achates.  Also, the Supreme Court held that institution decisions were generally unreviewable. The court emphasized that:

our interpretation 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 statutes related to the Patent Office’s decision to initiate inter partes review.  This means that we need not, and do not, decide the precise effect of § 314(d) on appeals that implicate constitutional questions, that depend on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond “this section.”  Thus, contrary to the dissent’s suggestion, we do not categorically preclude review of a final decision where a petition fails to give “sufficient notice” such that there is a due process problem with the entire proceeding, nor does our interpretation enable the agency to act outside its statutory limits by, for example, canceling a patent claim for “indefiniteness under § 112” in inter partes review.  Such “shenanigans” may be properly reviewable in the context of § 319 and under the Administrative Procedure Act, which enables reviewing courts to “set aside agency action” that is “contrary to constitutional right,” “in excess of statutory jurisdiction,” or “arbitrary [and] capricious.”

The Federal Circuit, however, saw nothing in Cuozzo that overruled Achates.  The Federal Circuit found that §315 was precisely the kind of statute “closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review” that the Supreme Court said was unreviewable.

The Federal Circuit also rejected the patent owner’s substantive arguments, finding no error in the PTAB’s determination that the challenged claims were anticipated.