Earlier today the United States Court of Appeals for the Federal Circuit issued an en banc decision in Wi-Fi One, LLC v. Broadcom Corp. The appeal asked whether the statutory prohibition against appealing an IPR institution determination similarly applies to IPRs instituted in violation of the statutory bar.
This rather bizarre dispute arose because Congress provided that the Director’s determination “whether to institute an inter partes review under this section shall be final and nonappealable.” Id. § 314(d). Notwithstanding, Congress similarly prohibited the Director from instituting inter partes review if the petition requesting that review is filed more than one year after the petitioner, real party in interest, or privy of the petitioner is served with a complaint for patent infringement. 35 U.S.C. § 315(b).
A panel of the Federal Circuit previously held that a § 315(b) time-bar determination is final and nonappealable under § 314(d). See Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015). Therefore, in this en banc appeal the Federal Circuit had to determine whether the bar on judicial review of institution decisions in § 314(d) applies to time-bar determinations made under § 315(b). In other words, if the Director institutes an IPR decision in violation of the statute of limitations can an Article III federal court review the decision to institute?
Today, the Federal Circuit reversed Achates, and ruled that time-bar determinations under § 315(b) are appealable. This obviously makes sense, and frankly it is curious why anyone would think that a decision to institute a petition filed in violation of the statute of limitations couldn’t be reviewed. Preventing the judicial review of untimely filed but still instituted petitions would render the statute of limitations meaningless.
“We find no clear and convincing indication in the specific statutory language in the AIA, the specific legislative history of the AIA, or the statutory scheme as a whole that demonstrates Congress’s intent to bar judicial review of § 315(b) time-bar determinations,” wrote Reyna in the majority opinion, which included Chief Judge Prost and Circuit Judges Newman, Moore, O’Malley, Wallach, Taranto, Chen and Stoll. The lack of such a clear and convincing indication from Congress coupled with the strong presumption in favor of judicial review of agency actions lead the majority to hold that time-bar determinations under § 315(b) are appealable. Therefore, this decision overrules Achates’s contrary conclusion.
Substantively, the majority would explain that after reviewing the entire statutory scheme as a whole, § 315 is not substantively related to the institution decision addressed in § 314(a), and it therefore is not subject to § 314(d)’s bar on judicial review.
A concurring opinion was filed by Judge O’Malley. In her concurring opinion Judge O’Malley wrote that she agreed with the ruling of the majority, but thought the majority made the question more difficult than it needed to be. O’Malley wrote:
If the United States Patent and Trade- mark Office (“PTO”) exceeds its statutory authority by instituting an IPR proceeding under circumstances contrary to the language of § 315(b), our court, sitting in its proper role as an appellate court, should review those determinations. Indeed, we should address those decisions in order to give effect to the congressionally imposed statutory limitations on the PTO’s authority to institute IPRs.
O’Malley would further explain:
Section 314(d)’s bar on appellate review is directed to the Director’s assessment of the substantive adequacy of a timely filed petition. Because § 315(b)’s time bar has nothing to do with the substantive adequacy of the petition and is directed, instead, to the Director’s authority to act, § 314(d) does not apply to decisions under that provision.
Judge Hughes, who was joined by Judges Lourie, Bryson, and Dyk, filed a dissenting opinion. The dissenters believed that the majority opinion directly contradicts the statutory language, and is also contrary to the Supreme Court’s ruling in Cuozzo Speed Technologies, LLC v. Lee, 136 S.Ct. 2131 (2016).