By Scott A. McKeown
| January 4, 2017

Bar to Appealing 315(b) Disputes Likely to be Overruled


Back in November, the Federal Circuit issued a non-precedential decision in the Click-To-Call Techs. v. Oracle Corp., which openly questioned the continued viability of Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) post-Cuozzo.  As a reminder, Achates held that issues arising under 35 U.S.C. § 315(b) (i.e,, IPR one year, time bar) could not be appealed to the CAFC, pursuant to 314(d).  

Today, in Wi-Fi One LLC v. Broadcom (here), the Court granted en banc review of the IPR appeal bar.

The question for en banc review is as follows:
Should this court overrule Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) and hold that judicial review is available for a patent owner to challenge the PTO’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review?
In the earlier Click-to-Call decision, Judge Taranto distinguished jurisdictional issues under the Administrative Procedure Act (APA) as compared to matters of patentability:
314(d). . .refers to a “determination . . .whether to institute an IPR under this section” (emphasis added). As a textual matter, those words clearly encompass the “reasonable likelihood” determination specified in § 314(a), but they leave unclear to what extent they reach determinations of compliance with other statutory provisions bearing on institution. The interpretive task demands a wider focus, beyond the words of § 314(d) alone, as the Court’s analysis in Cuozzo itself shows. . . ..regulations treat compliance with the timing rule for IPRs as a matter of Board “jurisdiction.” 37 C.F.R. § 42.3(b) (in section headed “Jurisdiction,” providing that “[a] petition to institute a trial must be filed with the Board consistent with any time period required by statute”) . . . .  The “jurisdiction” label, while a troublesome one in many contexts, here relates to an Administrative Procedure Act principle that the Court in Cuozzo invoked in stating that, at least sometimes and maybe generally, § 314(d) does not bar review to determine if agency action is “‘in excess of statutory jurisdiction.’”                            
As the Court appears likely to overrule Achates and allow appeal of IPR time bar issues, the question becomes: What will the Court do with incomplete factual records and PTAB denials of further discovery on 315(b) issues?  That is, the PTAB applies the interests of justice standard in determining whether additional discovery is warranted for 315(b) disputes in IPR (typically, for determining relationships among parties). Not surprisingly, the PTAB denies discovery for the vast majority of these disputes. Given the new appeal possibilities, 315(b) issues in ongoing IPRs will likely be reinvigorated as Patent Owners try to reserve such issues for appeal.

Should the Court decide to review such disputes going forward, the Board may decide to loosen its standards to avoid remands on such matters.  Alternatively, the Board will need to be especially mindful of the new review possibilities going forward and provide more fulsome explanations and fact finding as to such discovery denials.
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