Federal Circuit says IPR time-bar determinations under § 315(b) are appealable

By Gene Quinn
January 8, 2018

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).

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 7 Comments comments. Join the discussion.

  1. Anon January 8, 2018 4:20 pm

    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

    I think it NOT so curious if one bases the view on a strict reading of the words used by Congress in the AIA.

    It is MORE curious to think that the AIA was somehow written in an unflawed manner and that such (noncurious) readings would not somehow naturally lead to rather odd results.

    I will grant that the ends achieved by the en banc CAFC are ultimately sensible.

    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.

    I would highly disagree.

    The two sections are clearly substantively related, and especially so when one views the AIA in its entirety.

    And while I may also agree with the “feeling” expressed by the concurrence, I would push back that IF that view were to be truly applicable, THEN Congress needs to be chastised when it writes in such strong and stark words as it did in 314(d). THAT is (and those words are) where the real problem is to be found.

    In many locations of the AIA, Congress has chosen poorly. A “saving” decision like this one may “satisfy” the (as noted, conflicting) results of a POORLY written law, but to me, they are eminently Unsatisfying, as they do not reflect the actual (and actually conflicting) words of Congress.

    I would rather have the courts push back on Congress when such horribly written laws find their ways into the courts.
    What this does (I fear) is avoid a “pain” that is better taken “all at once,” analogous to ripping off of a Band-Aid.

  2. Gene Quinn January 8, 2018 4:59 pm

    Anon-

    You say: “It is MORE curious to think that the AIA was somehow written in an unflawed manner…”

    Agreed.

    You say: “Congress needs to be chastised when it writes in such strong and stark words as it did in 314(d).”

    Agreed 100%.

    I think O’Malley’s concurrence makes sense, but if I were a Judge I’d simply conclude that whether an IPR is time-barred is appealable because it is a subject matter jurisdictional matter. A violation of a statute of limitations must be challenged or it is waived. If it is challenged it strikes at the heart of whether the tribunal has authority to hear the case. It is not a substantive challenge to the Director’s determination to institute, but rather it is a challenge to the authority of the Director to institute.

    Remember, the Director had authorized institution where petitions were filed clearly outside the statute of limitations. That ultra vires action has to be appealable or it renders the statute of limitations superfluous.

  3. Anon January 8, 2018 5:08 pm

    Thanks Gene – I concur to your position.

    (still with chastisement to Congress for writing so horribly in the AIA)

  4. Edward Heller January 8, 2018 5:21 pm

    Gene, the prevailing law is that Congress intends appealability; thus the proponent of non-appealability must prove their case by clear and convincing evidence. From the point of clear and convincing evidence, one should note that the position of the patent office and indeed of the Justice Department for a good while was that the decisions under 315(b) were appealable from a final decision.

  5. Gene Quinn January 8, 2018 6:30 pm

    Edward-

    Agreed. Appealability is presumed unless there is clear and convincing evidence to suggest otherwise. As Anon points out, the AIA is written far less clearly than it could (and should have been). But for the Director’s decision to be insulated when there is a clear violation of institution based on a statutory bar would require an upending of generations (at least) of law. You cannot bring a case or claim after the statute of limitations has run and it has been raised as a defense.

    To read 315(b) as nonappealable would be to vest in the Director (delegated to the PTAB) absolute discretion to institute in violation of the statute. An absurd result.

  6. Patent Investor January 9, 2018 1:18 pm

    “An absurd result” to which four CAFC judges happily signed their name to support.

    An absurd court.

  7. staff February 9, 2018 9:29 am

    ‘violation of the statutory bar’

    These are just some of the reasons why post issue admin review is fundamentally flawed. When inventors have to fight to get, keep, or enforce our patents we go out of business. All such reviews must end.

    https://aminventorsforjustice.wordpress.com/2018/01/06/faster-and-cheaper/

    https://aminventorsforjustice.wordpress.com/2017/12/27/private-property-rights/

    https://aminventorsforjustice.wordpress.com/2017/11/28/but-justice-ruth-bader-ginsburg/

    https://aminventorsforjustice.wordpress.com/2017/11/01/bad-patents/

    For our position and the changes we advocate (the rest of the truth) to restore the patent system, or to join our effort, please visit us at https://aminventorsforjustice.wordpress.com/category/our-position/
    or, contact us at aifj@mail.com

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