W-Fi One LLC v. Broadcom Corp. ”“ Time bar of USPTO IPR petition is appealable

On January 8, 2018, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) issued its decision in Wi-Fi One, LLC v. Broadcom Corp., holding that time-bar determinations under 35 U.S.C. § 315(b) (“§ 315(b)”) are appealable and overruling Achates”™s holding that a § 315(b) time-bar determination is final and non-appealable under 35 U.S.C. § 314(d).  The provision at issue, § 315(b), states 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.”

This case began in 2010 when Telefonaktiebolaget LM Ericsson (“Ericsson”) brought suit against multiple telecommunication companies for infringement of four different patents; however, Broadcom Corp. (“Broadcom”) was never a defendant in this litigation.  In 2013, Broadcom filed petitions at the U.S. Patent and Trademark Office (“USPTO”) for inter-partes review (“IPR”) of three of the four patents.  During the pendency of the IPRs, Ericsson transferred ownership of the three patents to Wi-Fi One, LLC (“WiFi”).  During the review, Wi-Fi argued that the defendants in the initial 2010 litigation were in privity with Broadcom, the suit was filed more than a year ago, and because of those facts, the IPR petitions were time-barred under § 315(b).  However, in the Final Written Decisions, the USPTO Patent Trial and Appeal Board (“PTAB”) determined that Wi-Fi had not shown that Broadcom was in privity with the defendants in the initial 2010 litigation, and therefore, the IPR petitions were not time-barred under § 315(b).

Wi-Fi appealed the Board”™s decision; however, the Federal Circuit rejected Wi-Fi”™s arguments, reasoning that Achates renders the § 315(b) time-bar rulings non-appealable.  Subsequently, Wi-Fi petitioned for rehearing en banc and the Federal Circuit granted Wi-Fi”™s motion to determine whether the § 315(b) time-bar determinations are judicially reviewable.

Coming down to a 9-4 decision, the Federal Circuit held PTAB decisions finding that an IPR petition is timely can be appealed.  Writing for the majority, Federal Circuit Judge Reyna first looked if there was an congressional intent to prohibit review, finding that there is “no clear and convincing” indication in the language of the AIA “that demonstrates Congress”™s intent to bar judicial review of § 315(b) time-bar determinations.”  Op. at 15.  The opinion then compares the statutory language in § 314(a) and § 315(b).  § 314(a) defines the threshold in terms of determinations that are focused on the patentability merits of particular claims, where as § 315(b) focuses on when an IPR petition can be filed in order to have an IPR be instituted.  This is important to note, because § 314(d) bars judicial review of issues directed to the patentability merits of particular claims.  Looking at the rest of the sections (§ 311313), the Federal Circuit found that the § 315(b) time-bar determinations are fundamentally different from those evaluating the satisfactions of the other sections”™ requirements.  The Federal Circuit concluded that “the statutory scheme as a whole demonstrates that § 315 is not ”˜closely related”™ to the institution decision addressed in § 314(a), and it therefore is not subject to § 314(d)”™s bar on judicial review.”  Op. at 20.

Since this decision provided that the time limitation of § 315(b) for IPR”™s is appealable, this decision opens the door for future cases wanting to test the reviewability of other requirements provided by statutes concerning the USPTO post-grant process.