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En Banc Federal Circuit Will Review Appealability of Decision to Institute IPR

The en banc Federal Circuit on January 4, 2017, agreed to reconsider its ruling that a Patent Trial and Appeal Board decision to initiate an inter partes review is not appealable where the decision involved time-bar issues under 35 U.S.C. 315(b).  Wi-Fi One, LLC v. Broadcom Corp., Fed. Cir., No. 2015-1944, en banc order 1/4/2017.

The question posed for briefing is the following:
Should this court overrule Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) 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 appellant’s brief is due February 13; amicus briefs supporting the appellant or supporting neither party are due February 23.  The appellee’s brief is due March 15; amicus briefs supporting the appellee’s position are due March 27. The U.S. Patent and Trademark Office was invited to present its views in an amicus brief.

Vacated Panel Decision

The en banc order vacates the panel decision in this case, which held that Achates was not implicitly overruled by the Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016).

Cuozzo also involved the Section 314(d) bar to appealing decisions to institute IPRs, specifically whether that provision should apply where the decision to institute was made on grounds not specifically mentioned in the petition. Justice Breyer wrote that the presumption favoring judicial review was overcome in this case as to Section 314(d), but added the following:
[W]e emphasize 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. See §314(d) (barring appeals of “determinations . . . to initiate an inter partes review under this section” (emphasis added)). 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 entir​e 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.
According to the 2-1 panel decision in this case, Cuozzo, did not implicitly overrule the Achates ruling because it said the bar on reviewability applies to questions closely tied to statutes related to the PTAB decision to initiate an IPR.  The decision explained that the time-bar in Section 315, like the Section 312(a)(3) particularity requirement involved in Cuozzo, is such a statute in that it governs who may seek inter partes review. Judge Reyna dissented because the time-bar issue was part of the PTAB’s final written decision.

Click here to read the Federal Circuit en banc order.