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Federal Circuit Holds That PTAB's Determination on Whether the One Year Time-Bar Is Triggered in <i>Inter Partes</i> Review Is Reviewable on Appeal
On Jan. 8, 2018, eight months after the oral argument, the Federal Circuit issued its significant en banc decision in Wi-Fi One, LLC v. Broadcom Corporation, No. 2015-1944, 2018 WL 313065 (Fed. Cir. Jan. 8, 2018). In that decision, the Federal Circuit held that the time-bar of 35 U.S.C. §315(b) is reviewable on appeal, thus overturning a prior panel decision and opening the door for parties to challenge how the U.S. Patent and Trademark Office (PTO) has interpreted and applied that statutory provision.
The inter partes review (IPR) process for challenging patent validity before the Patent Office's Patent Trial and Appeal Board (PTAB) has been around for over five years. During that time, the process has become a widely utilized and popular venue that allows defendants to strike back against patentees when they are sued for infringement. Section 315(b) imposes an important limit on the IPR process. It requires that all IPR petitions be filed within one year of the petitioner being served with a “complaint alleging infringement of the patent.” In other words, those sued for infringement must petition the PTAB for IPR within one year of being sued. Any petitions filed after one year are statutorily barred. Importantly, the time-bar of §315(b) extends beyond the named petitioner to a “real party in interest, or privy of the petitioner.”
Many patent owners have challenged the PTAB's decision to conduct IPR on grounds that the petitioner was time-barred, or in privity with a time-barred party, or that a real party in interest was time-barred. Still others have challenged whether “complaints” in other types of actions, such as arbitrations under 35 U.S.C. §294 or International Trade Commission investigations, could trigger §315(b)'s one-year bar. Prior to the Federal Circuit's recent en banc decision in Wi-Fi One, however, the PTAB's determinations on §315(b) were unreviewable on appeal under a case entitled Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015). Achates held that another provision of the statute — 35 U.S.C. §314(d) — precluded review of the PTAB's §315(b) determinations because decisions to institute IPR are non-appealable.
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