Posts Tagged: "Wi-Fi One vs. Broadcom"

This article reviews recent Federal Circuit and Supreme Court decisions addressing the scope of appellate review of institution of inter partes review (IPR) by the Patent Trial and Appeal Board. The America Invents Act, 35 U.S.C. § 314(d), provides that: “[t]he determination… whether to institute an inter partes review under this section shall be final and nonappealable.” Federal courts initially interpreted Section 314(d) to bar appellate review of institution decisions entirely. However, recent decisions have narrowed Section 314(d) and expanded the scope of appellate review of matters decided by the Board at institution. This article will review decisions interpreting Section 314(d) to date, and explain how recent precedents have created new opportunities for appellate review of the Board’s decisionmaking in IPR proceedings.

Given the PTAB’s ability to make decisions precedential, Ruschke’s argument about how important and meaningful it is to have expanded panels to ensure uniformity misses the mark. The PTAB does not designate many cases as precedential (another problem for a different day), but it is possible for a three-judge panel decision to be made precedential. In fact, there have been a number of cases that have been pronounced as precedential by the PTAB where the decision was made by a three-judge panel. That being the case, why is it necessary for any expanded panels unless PTAB leadership is trying to influence Administrative Patent Judges despite the lack of a precedential designation? And doesn’t such an attempt to influence call into question the decisional independence of APJs?

Inter Partes Review proceedings (IPRs) are subject to statutory timing provisions. The Court, sitting en banc, reviewed whether PTAB decisions determining whether an IPR was timely filed are appealable. More specifically, the Court considered whether the bar on judicial review of institution decisions, under Section 314(d), applies to the Board’s time-bar determinations, under Section 315(b)… Time-bar determinations by the patent office are reviewable by the Federal Circuit.

The relationship between PTAB proceedings and parallel district court litigation may be altered significantly. The arguments in Wi-Fi One vs. Broadcom this week may change a lot about PTAB. In fact, the U.S. Court of Appeals for the Federal Circuit has announced that it will hear the question of whether certain decisions of the PTAB that are entered at the beginning of America Invents Act (AIA) trials.

Wi-Fi One stands among the latest—and potentially the most important—in a series of cases that have called into question both the degree to which Congress intended to restrict the authority of federal courts to review certain decisions made by the Patent Trial and Appeal Board (PTAB) and the limits on Congress’s power to actually do so. While it remains to be seen how the en banc Federal Circuit will ultimately rule, the answer to its question will inevitably have a broad and deep impact on future inter partes review and other post-grant proceedings, Patent Office procedures, and beyond.