US Federal Circuit Rules That PTAB Timeliness Rulings for IPR Petitions Are Subject to Judicial Review
In a 9-4 split, the Federal Circuit sitting en banc ruled that Patent Trial & Appeal Board (PTAB) determinations as to whether an inter partes review (IPR) petition was timely filed are reviewable on appeal, overruling a previous panel decision holding that judicial review was not available. The decision in Wi-Fi One, LLC v. Broadcom Corp., allows patent owners to appeal PTAB determinations as to the timeliness of an IPR petition, notwithstanding that the Patent Act prohibits judicial review of PTAB decisions as to whether to institute IPR proceedings.
Reviewability of PTAB Institution Decisions
IPR proceedings were introduced five years ago via the America Invents Act, with the idea of providing an alternative pathway for attacking patent validity that is quicker and more cost-effective than district court patent litigation. Upon receipt of a petition seeking to institute an IPR proceeding, the PTAB will only institute the proceeding if it determines that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a). The PTAB’s determination whether to institute the IPR is final and nonappealable. 35 U.S.C. § 314(d).
An additional requirement, however, is that a party sued for patent infringement in district court and its privies have up to one year to file a petition seeking institution of IPR proceedings if they wish to collaterally attack the validity of a patent-in-suit before the PTAB. 35 U.S.C. § 315(b).
In Wi-Fi One, Ericsson sued ten defendants for infringement of three patents in 2010, which resulted in a jury verdict of infringement. In 2013, Broadcom, which was not a party to that litigation, filed three separate IPR petitions challenging patentability of the three patents-in-suit. Wi-Fi One, which had purchased the patents from Ericsson in the interim, moved to dismiss Broadcom’s petitions on the grounds that they were time-barred under § 315(b), because Broadcom was in privity with the defendants to the litigation filed more than a year earlier. The PTAB denied the motions (on the grounds that Broadcom was not in privity with the prior litigants), instituted the requested IPR proceedings, and ultimately issued final decisions finding the challenged claims unpatentable.
Wi-Fi One appealed to the Federal Circuit, seeking to overturn the PTAB’s timeliness determination. A three-judge panel rejected Wi-Fi One’s arguments, holding that PTAB timeliness rulings are nonreviewable in view of the provisions of § 314(d) stating that PTAB decisions whether to institute IPR proceedings are final and nonappealable. Wi-Fi One petitioned for rehearing en banc.
Modeling its discussion after the recent Supreme Court analysis in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), the full court reversed the panel, explaining that there is a “strong presumption favoring judicial review” of administrative action, such that judicial review is prohibited only based on a “clear and convincing” indication by Congress evidenced by “specific language, specific legislative history, and inferences of intent drawn from the statutory scheme as a whole.” In Cuozzo, the Supreme Court held that PTAB determinations as to whether an IPR petition had met the statutory requirement of identifying the grounds for challenging the patent with sufficient particularity as set forth in § 312(a)(3) were unreviewable on appeal, in view of § 314(d). But, the Court expressly left open the possibility of judicial review for various other types of issues, such as decisions that are not “closely related” to the merits of patentability under § 314(a), decisions that raise constitutional concerns, and decisions that exceed the agency’s authority to act. Relying on these exceptions, the Federal Circuit evaluated the statutory language and scheme to determine that timeliness determinations under § 315(b) are not “some minor statutory technicality,” but are a limit on the agency’s authority to act under the IPR scheme, and that they are not “closely related” to the Board’s determination on patentability merits under § 314(a). Finding no clear and convincing direction that Congress intended such determinations to be encompassed within § 314(d), the Court held that PTAB timeliness determinations are in fact reviewable on appeal.
Key Takeaways
The implications of Wi-Fi One extend beyond the obvious result that parties may now appeal PTAB timeliness rulings. The Federal Circuit expressly noted that “we do not decide today” whether issues other than time-bar determinations under § 315(b) are also subject to appeal, which leaves litigants free to argue that other issues not directly implicated by PTAB institution decisions under § 314(a) should also be appealable. This might include, for example, decisions such as whether a petitioner has properly named all interested parties and whether estoppel bars a party from filing a petition.
