IPWatchdog.com is in the process of transitioning to a newer version of our website. Please be patient with us while we work out all the kinks.

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

The relationship between PTAB proceedings and parallel district court litigation may be altered significantly.

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.”


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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Join the Discussion

4 comments so far.

  • [Avatar for Patent Investor]
    Patent Investor
    May 5, 2017 10:23 am

    So now due process (discovery into the RPI relationships of the petitioner) is called a “minor statutory technicality” by the PTO. No wonder the idea of an administrative state scares the he!! out of me.

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    May 6, 2017 09:42 am

    This patent owner does seems likely to win. But the number of IPRs that have serious institution legality issues like this [rather than evidentiary factual disputes] is very small. Also, the Fed. Cir. is not about to allow extensive interlocutory appeals of normal IPR institutions, especially in view of the subject statutory language. So the actual impact of this decision will be minimal.

  • [Avatar for Ned Heller]
    Ned Heller
    May 6, 2017 03:30 pm

    Well Paul, you do recall MCM Portfolio LLC v. Hewlett-Packard? 315(b) was thoroughly litigated in that case. The PTAB said some very nonsensical things in holding that MCM had not proved privity for the purposes of 315(b), without actually saying what those purposes were. Thus, the PTAB provided no explanation at all as to why they denied MCM its rights under the statute.

    We sought mandamus. The government then argued that are mandamus should be denied because we could raise the issue on appeal. On that basis, the Federal Circuit denied our petition without prejudice to raising the issue on appeal. But when we raised the issue on appeal, the government argued that the issue was nonappealable at all. And that is what the Federal Circuit held in our case as well as Achates.

    In other words, we got rough justice by any measure.

    But such is the world where there is no access to a court of law to redress grievances.

  • [Avatar for Anon]
    May 8, 2017 06:18 am

    I am not sure that you asked the right questions, Mr. Heller.

    Your questions did not aim for the right entity.

    Whether the PTAB was doing what Congress wrote was just not the right question.