Federal Circuit Holds Patentee May Challenge Timeliness Determination Regarding Inter Partes Review Petition

January 18, 2018

In Wi-Fi One, LLC v. Broadcom Corp., an en banc Federal Circuit majority held that the timeliness of a petition for inter partes review (IPR) is appealable. [1]  The opinion overruled Achates Reference Publishing, Inc. v. Apple Inc., where a Federal Circuit panel held that a determination regarding a § 315(b) time-bar for filing an IPR petition is final and nonappealable under 35 U.S.C. § 314(d).[2]

35 U.S.C. § 315(b) provides that an IPR may not be instituted if the IPR petition is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served a complaint alleging patent infringement. 35 U.S.C. § 314(d) provides that the PTO Director’s decision to institute IPR “is final and nonappealable.” At issue in Wi-Fi One was whether the bar on judicial review of IPR institution decisions per § 314(d) also applies to time-bar determinations made under § 315(b).[3] Wi-Fi One argued that the USPTO Director could not institute an IPR of certain Wi-Fi One patents under § 315(b) because Broadcom was in privity with defendants in a previous litigation, who had been served a complaint more than one year before Broadcom filed the IPR petitions.[4]

The opinion, authored by Circuit Judge Reyna, recognized the strong presumption favoring judicial review of agency actions, while also noting that overcoming this presumption requires a clear indication that Congress intended to prohibit judicial review.[5] The majority relied upon the Supreme Court’s rationale in Cuozzo Speed Techs., LLC v. Lee, noting that the Cuozzo decision left open the possibility for review of IPR institution decisions in certain instances.[6] The Federal Circuit majority also noted the Cuozzo decision prohibited judicial review only where the grounds for attacking the IPR institution decision consisted of questions closely tied to the application and interpretation of statutes related to the IPR institution decision.[7]

The majority opinion recited the historical basis for allowing courts to review the enforcement of statutory limits on an agency’s authority to act, and posited that the § 315(b) time bar is such an issue because it is a statutory limit on the PTO Director’s ability to institute an IPR. [8]  The majority ultimately found no clear and convincing indication that Congress had intended to prohibit judicial review of whether an IPR petition satisfies the timing requirement of § 315(b).[9]

In concurring with the majority holding, Circuit Judge O’Malley noted that § 315(b) allows judicial review of PTO time-bar determinations and helps prevent the PTO from superseding its lawful limits, which is a scenario foreseen in Cuozzo.[10] Time-bar determinations by the PTO, in Judge O’Malley’s view, are unrelated to the agency’s “core statutory function” of determining whether claims are patentable.[11] Judge O’Malley wrote that Congress should control the application of statutory time bars, and not the PTO Director.[12]

Circuit Judge Hughes authored a dissent joined by Circuit Judges Lourie, Bryson, and Dyk. The dissent asserted that Cuozzo held that § 314(d) barred judicial review of closely related issues such as an IPR petition’s timeliness.[13] Thus, in the dissent’s view, the majority’s opinion was inconsistent with Cuozzo and the plain meaning of § 314(d).[14] The dissent further maintained that the language of § 314(d) was clear and did not allow the majority to carve out certain requirements for IPR institution which may be barred from judicial review under the statute.[15]



[1] No. 2015-1944, 2018 WL 313065 (Fed. Cir. Jan. 8, 2018).

[2] 803 F.3d 652 (Fed. Cir. 2015).

[3] Wi-Fi One, slip op. at 8 (majority opinion).

[4] Id. at 13-14.

[5] Id. at 14-15.

[6] Id. at 17-18 (citing Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140-42 (2016)).

[7] Wi-Fi One, slip op. at 17-18 (citing Cuozzo, 136 S. Ct. at 2142) (majority opinion).

[8] Wi-Fi One, slip op.  at 20-21 (citing City of Arlington v. F.C.C., 569 U.S. 290, 307 (2013); Bowen v. Michigan Acad. of Family Physicians, 476 U.S. 667, 671 (1986); Leedom v. Kyne, 358 U.S. 184, 190 (1958))(majority opinion).

[9] Wi-Fi One, slip op. at 21 (majority opinion).

[10] Id. slip op. at 4-5 (concurring opinion).

[11] Id. at 6.

[12] Id. at 7.

[13] Wi-Fi One, slip op. at 3 (dissenting opinion).

[14] Id.

[15] Id. at 8.