A Federal Circuit panel recently confirmed that 35 U.S.C. § 314(d) does not permit appeal of a decision by the PTAB that an IPR petitioner is not time-barred under 35 U.S.C. § 315(b). Wi-Fi One, LLC v. Broadcom Corporation, No. 2015-1944 (Fed. Cir. Sep. 16, 2016).
Patent Owner unsuccessfully argued to the PTAB that Petitioner was time-barred from seeking IPR of its patent because Petitioner was in privity with certain entities involved in parallel district court litigation over the patent who were time-barred under Section 315(b). On appeal, Patent Owner recognized that the Federal Circuit (in Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015)) held that Section 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).”
Patent Owner argued that the Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), implicitly overruled Achates. Specifically, Cuozzo “tied the limitation of judicial review to the Patent Office’s ability to make its substantive patentability determination as embodied in § 314(a)” and left open “the precise effect of § 314(d) on appeals . . . that depend on other less closely related statutes,” such as the time-bar of Section 315(b).
The Federal Circuit rejected Patent Owner’s argument, as Cuozzo stated that the prohibition against reviewability applies to “questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review,” and that Section 315 “is just such a statute.” In fact, Cuozzo addressed Section 312, which governs what form a petition must take and is not related to substantive patentability.
Patent Owner also argued that time-bar issues should be reviewable because parties may argue those issues at trial. However, the Court noted that Achates also rejected this argument, and was not overruled by Cuozzo.
The Federal Circuit has now made clear that decisions under Section 315(b) are not appealable, and that the reviewability ban under Section 314(d) is not limited to issues arising under section 314. Thus, although it was the Patent Owner that was denied appellate review in Wi-Fi One, it is even more critical in the wake of that decision that parties wishing to file an IPR address potential privity issues as early as possible and account for any potential time-bar issues in deciding when to file their IPR.