En banc Federal Circuit to review time-bar PTAB appeals
The full US Court of Appeals for the Federal Circuit has agreed to assess whether judicial review is available for a patent owner to challenge Patent Trial and Appeal Board (PTAB) determinations that say inter partes review (IPR) petitions satisfy the timeliness requirement.
Yesterday, January 4, the court agreed to a rehearing en banc in the case of Wi-Fi One v Broadcom Corporation.
In September last year, the Federal Circuit heard an appeal from Wi-Fi One centring on a decision by the PTAB in an IPR.
Broadcom had petitioned for an IPR of US patent number 6,772,215, owned by Wi-Fi One, in 2013.
Before the institution decision, Wi-Fi One argued that Broadcom was barred from seeking review of the patent and filed a motion seeking discovery designed to support its argument.
Under 35 USC, section 315(b), an IPR may not be instituted if “the petition requesting the proceeding is filed more than one year after the date on which the petitioner … is served with a complaint alleging infringement of the patent”.
The board denied Wi-Fi One’s motion and the company appealed to the Federal Circuit.
According to the company, Achates Reference Publishing v Apple, a case that prevents judicial review by the courts in instances concerning IPR timeliness, was implicitly overruled by Cuozzo Speed Technologies v Lee, a Supreme Court decision.
“Wi-Fi does not dispute that Achates renders its challenge to the board’s timeliness ruling non-appealable if Achates is still good law,” said the court.
But the court disagreed, adding that it sees “nothing in the Cuozzo decision that suggests Achates has been implicitly overruled”.
Wi-Fi One then filed a petition for rehearing and rehearing en banc in three appeals, and a response was invited from Broadcom Corporation to the three petitions.
The petitions and responses were considered by the panel that heard the appeal and then referred to the Federal Circuit judges “in regular active service”.
According to the order, a poll was requested and taken, and the court decided that the appeal warrants en banc consideration.
The court asked Wi-Fi One and Broadcom to file supplemental briefs answering the question of whether it should overrule Achates.
The court invited the US Patent and Trademark Office to share its views as an amicus curiae.
