Docket No. 2015-1944 (IPR2013-00601, affirmed with precedential opinion; see Summary below)
Docket No. 2015-1945 (IPR2013-602, affirmed without opinion (Rule 36 judgment))
Docket No. 2015-1946 (IPR2013-00636, affirmed without opinion (Rule 36 judgment))
DYK, BRYSON, REYNA
September 16, 2016
Update (1/4/17): Rehearing en banc granted, earlier decisions vacated and appeals reinstated; Question to be addressed: “Should this court overrule [Achates (FC 2015)] and hold that judicial review is available for a patent owner to challenge the PTO’s determination that the petitions satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for” IPR?
Brief Summary: Wi-Fi’s argument that Cuozzo (US 2016) “implicitly overruled Achates” and it should be able to appeal the “privity” question rejected. Board’s decision of anticipation affirmed.
Summary: Wi-Fi appealed Board decision that Broadcom was not barred from petitioning for IPR “because it was in privity with a time-barred district court litigant” Under 35 U.S.C. § 315(b), IPR may not be instituted “if the petition…is filed more than 1 one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Privity is determined using “a flexible analysis that ‘seeks to determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels” (Office Patent Trial Practice Guide, 2012). In Achates (FC 2015), the FC determined that 35 U.S.C. § 314(d) prohibited it from reviewing the Board’s determination on this point. Wi-Fi argued that Cuozzo (US 2016) “implicitly overruled Achates” but the FC disagreed since, it wrote, “[t]he Supreme court stated that the prohibition against reviewability applies to ‘questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate” IPR and “Section 315 is just such a statute.” The FC panel also disagreed with Wi-Fi that “time-bar issues should be reviewable because Board practice allows parties to argue those issues at trial” (“That argument, too, was rejected in Achates.”) It further disagreed “that the Board’s denial of its request for discovery on the time-bar issue is an example of the ‘shenanigans’ that the Supreme Court in Cuozzo suggested would be reviewable” since Wi-Fi’s request was denied because it “had not made a sufficient showing to support its request.” Wi-Fi also appealed the Board decision of anticipation of its claims but the FC panel concluded the Board was correct (e.g., “Because there is no support in the patent or the prosecution history for Wi-Fi’s distinction…, the Board was correct to reject Wi-Fi’s argument” and “the Board’s conclusion that Seo discloses different message types if supported by substantial evidence.”) Wi-Fi also challenged the Board’s interpretation of “at least one of, a length field, a plurality of erroneous sequence number-fields, and a plurality of erroneous sequence number fields”, arguing that the claim “requires that each erroneous sequence number field must be associated with an erroneous sequence number length field” due to a later appearing “each of said plurality of erroneous sequence number fields” clause. The FC panel found “the text of the limitation, standing alone, favors Wi-Fi’s interpretation” but concluded it “does not make sense in light of the specification” which “makes clear than an erroneous sequence number field can be used absent an erroneous sequence number length field” and therefore accepted Broadcom’s interpretation. Thus, the Board decision was affirmed.