Docket Nos. 2015-1944-46 (IPR2013-00601, -00602, 00636)
En banc decision
January 5, 2018
Brief summary: En banc FC found “no clear and convincing indication of Congress’s intent to bar judicial review of § 315(b) time-bar determinations” made by the PTO (unlike § 314 decisions regarding the threshold for institution).
Summary: The FC previously held in Achates (FC 2015) “that a time § 315(b) time-bar determination is final and non-appealable under § 314(d)” (§ 315(b): IPR must be filed within one year of service with a patent infringement complaint; § 314(d): “whether to institute [IPR]…shall be final and nonappealable”). Here, the en banc FC again considered that question and overruled Achates, holding “that the time-bar determinations under § 315(b) are appealable”. This opinion reviewed the IPR procedure under the 2011 Leahy-Smith America Invents Act (“AIA”) and its 2015 Achates decision in which “the patent owner argued that the Board acted outside of its statutory authority by instituting IPR on a petition that was time-barred under § 315(b)” but the Achates FC panel disagreed, finding itself “barred from reviewing § 315(b) decision” (Board decision did “not constitute ultra vires agency action that might otherwise support judicial review”). The FC here explained that in SCOTUS’s 2016 Cuozzo decision, “[t]he Court made clear that its holding” that “a challenge to the Patent Office’s conclusion, under § 314(a), that the ‘information presented in the petition’ [for IPR] warranted review” was non-appealable “was limited” and “left open the potential for review, under certain circumstances, of decisions to institute IPR” (e.g., “a due process problem with the entire proceeding” or “cancelling a patent claim for ‘indefiniteness under § 112’”). In this case, Wi-Fi alleged Broadcom’s IPR petitions were “time-barred under § 315(b) because Ericsson, the patents’ previous owner, had already asserted infringement in [DC] against defendants that were in privity with petitioner Broadcom more than a year prior to the filing of the petitions.” In its FWD, the Board disagreed WiFi had shown privity and concluded there was no § 315(b) time bar. In its appeal, WiFi argued the Board’s time bar decision was incorrect but the FC panel found that point was nonappealable, and WiFi’s petition for rehearing en banc was granted. The FC explained that “if a statute is ‘reasonably susceptible’ to an interpretation allowing judicial review, [it] must adopt such an interpretation”, which will be “abdicate[d]…only when Congress provides a ‘clear and convincing’ indication that it intends to prohibit review” (Kucana, US 2010; Cuozzo, US 2016 (strong presumption favoring judicial review). And the FC found “no clear and convincing indication of Congress’s intent to bar judicial review of § 315(b) time-bar determinations” made by the PTO, unlike a decision not to institute under § 314 regarding the threshold for institution (“reasonable likelihood that the petitioner would prevail”; § 315(b) “has nothing to do with the patentability merits or discretion not to institute…The time bar is not merely about preliminary procedural requirements that may be corrected if they fail to reflect real-world facts, but about real-worled facts that limit the agency’s authority to act under the IPR scheme.”) The original Wi-Fi decision that the § 315(b) decision was nonappealable was remanded “for the panel to consider in the first instance the merits of Wi-Fi’s time-bar appeal.” Judge O’Malley concurred separately. Judges Hughes, Lourie, Bryson and Dyk dissented, arguing the decision is based on a contradictory and “narrow reading of the statute”, and contrary to Cuozzo.