On May 4, 2017, the en banc Federal Circuit heard oral arguments in Wi-Fi One, LLC v. Broadcom Corp., Appeal 2015-1944 (Fed. Cir. Sept. 16, 2016) to consider whether the findings of the Patent Trial & Appeals Board (“PTAB”) regarding 35 U.S.C. § 315(b), which governs the timeliness of filing a petition for inter partes review (“IPR”), are subject to judicial review on appeal. Specifically, the Federal Circuit is considering whether it should overrule its panel decision in Achates Reference Publishing Inc. v. Apple Inc. 803 F.3d, 652 (Fed. Cir. 2015), cert. dismissed, 136 S. Ct. 998 (2016) that judicial review is unavailable to challenge a determination by the PTAB that the petitioner satisfied the requirement of 35 U.S.C. § 315(b). Whether Achates is upheld or overruled will hinge on how broadly the Court construes the scope of 35 U.S.C. § 314(d).
In Achates, the Court held that it lacked jurisdiction to review a PTAB decision that a petition to institute an IPR was not time barred because such decisions “are final and nonappealable under 35 U.S.C. § 314(d).” Achates at 653. In particular, the Court held that, similar to their holding in In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015), judicial review was precluded because “the § 315(b) time bar does not impact the Board’s authority to invalidate a patent claim — it only bars particular petitioners from challenging the claim.” Achates at 657. According to the Court, the time bar is also not a “‘defining characteristic’ of the Board’s ‘authority to invalidate’ a patent.” Id. The Court further held that 35 U.S.C. § 314(d) is properly construed as not limiting preclusion of judicial review to determinations “under this section,” but as extending the preclusion to 35 U.S.C. § 315(b), and that review is precluded even if the determination is reconsidered during the merits phase and restated in the final written decision. Id. at 658.
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