Wi-Fi One vs. Broadcom May Reshape PTAB Trial Proceedings

The arguments at the United States Court of Appeals for the Federal Circuit in Wi-Fi One vs. Broadcom this week may change a lot about PTAB.

The Federal Circuit announced with a per curiam order on January 4, 2017, that the full Court sitting en banc would decided whether judicial review is available for a patent owner to challenge the PTO’s determination that a petitioner has satisfactorily met the timeliness requirement for filing an inter partes review petition under 35 U.S.C. 315(b).

This case has the potential to completely reshape the entire conduct of PTAB Trial proceedings and may even alter the relationship between the PTAB Trials and parallel district court proceedings. The dispute in the Wi-Fi One case parallels the facts in Achates, and if the Federal Circuit were to overrule Achates, its decision could have key ramifications for PTAB practice. The question specifically presented by the Court for en banc consideration squarely puts the question on the line: “Should this court overrule Achates…”

Eliot D. Williams, a partner at Baker Botts L.L.P, sat down with IPWatchdog to discuss the potential impact of this case on PTAB. Williams handles intellectual property matters, in federal courts throughout the country and in PTAB.

This case is the first opportunity for the entire Federal Circuit to wade into the murky waters left by the Supreme Court’s decision last year in Cuozzo as to whether the PTAB’s preliminary institution decisions are reviewable in the courts. Cuozzo confirmed that those institution decisions are not reviewable when a review would threaten to unwind the PTAB’s decision on patentability under a minor statutory technicality, but might be reviewable if the PTAB were to act outside its limits.

“The issue presented in this case relates to whether the PTAB’s mistaken decisions as to whether the petition was timely filed fall into the category of a ‘minor statutory technicality’ and are therefore not reviewable, or instead would exceed a statutory limit that constrains the PTAB’s actions, thereby making those decisions reviewable,” explained Williams.

So, why does this case have the potential to reshape the conduct of PTAB Trial proceedings? Today, no PTAB institution decisions are reviewable, except for a narrow issue applicable only in Covered Business Method Reviews.

“If the Federal Circuit opens the door to reviewing PTAB institution decisions in Inter Partes Reviews, it would likely generate numerous appeals as parties seek to test the limits of this new reviewability,” he said.

In addition, the Court will need to address the question of when these appeals may be brought. For example, if the appeals may be brought right after receiving an institution decision, and if the PTAB action is stayed during that appeal, it would be impossible for the PTAB to complete a review within the one-year statutory period. However, if the PTAB action continues while the appeal is pending, there is a potential for a waste of resources in the PTAB if the Federal Circuit finds that the proceeding should not have been instituted.

Secondly, there is an issue relates to the PTAB’s practice of allowing limited discovery during PTAB proceedings, according to Williams. If the Federal Circuit were to address that question and require the PTAB to permit more discovery than is permitted under its current practice, that could have a big impact on the conduct of PTAB proceedings.

“If institution decisions become routinely reviewed, it could slow down PTAB proceedings, making district courts far less likely to stay their own proceedings in favor of a parallel PTAB action,” she said. “This would be a significant change in dynamics, and would potentially make the PTAB a less desirable forum for parties to resolve invalidity issues.”

According to Williams, the fact that the court took this case en banc shows that judges are concerned that the lack of reviewability of the PTAB’s decisions on petition timeliness could make that statutory provision a dead letter unless the court were to permit reviews of such decisions. But, the PTO makes a strong argument in its brief that those types of decisions are akin to the type of minor statutory that the Supreme Court in Cuozzo cautioned should not serve as a basis to keep an invalid patent on the books.

He added, “Regardless of how the court rules here, it is not clear that it will have much practical impact on the parties.”