Wait... Now Timing is of the Essence? Reviewability of IPR Institution Decisions
Last January, the US Court of Appeals for the Federal Circuit, sitting en banc, decided for the first time that some issues related to institution decisions for inter partes reviews are reviewable on appeal. Wi-Fi One, LLC v. Broadcom Corp., Case Nos: 2015-1944, -1945 & -1946 (Fed. Cir. Jan. 08, 2018)(en banc). Specifically, issues related to meeting the timing requirements for filing a petition for IPR (under Section 315(b)) are now reviewable on appeal.
35 USC §314(d) indicates that the Director’s determination of “whether to institute an inter partes review under this section shall be final and nonappealable.” Timing on inter partes review petitions is governed by §315(b), requiring that “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”
In 2015, a Court of Appeals panel held that §315(b)’s time bar was not reviewable on appeal due to §314(d)’s language in Achates Reference Publishing v. Apple. See also, October 2016 ed. of Just Intellectuals eNewsletter. The en banc court has now overruled that decision considering Cuozzo (SCOTUS 2016) and the two-step analysis the high-court articulated for deciding reviewability. (First, beginning with a “strong presumption in favor of judicial review” and second, overcoming that presumption only with “clear and convincing” indications that Congress intended to bar review.) Cuozzo involved an unsuccessful appeal of an inter partes review institution decision based on §312(a)(3), a non-timing statute regarding whether the petition identified with sufficient particularity “each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” In Cuozzo, the Supreme Court held that the issue of articulated grounds in §312(a)(3) was so “closely related” to the reasonable-likelihood-of-success metric under §314(a) that the presumption favoring judicial review had been overcome by Congress’ language in §314(d). Accordingly, issues under §312(a)(3) were found to be nonreviewable.
The Wi-Fi majority interpreted the “closely related [to §314(a)]” language of Cuozzo to mean significantly tied to the substantive merits of an institution decision, rather than procedural questions. In Wi-Fi, the earlier patent owner initiated suit for infringement in 2010 against a litany of defendants and though the appellee was never a defendant to that litigation, the subsequent assignee argued that the 2013 inter partes reviews should not have been instituted because the appellee was in privity to the 2010 litigation. Finding that the appellee was not actually in privity to the litigation, the Patent Trial and Appeal Board panel instituted the inter partes reviews ultimately finding the challenged claims unpatentable. The Board further denied a petition for rehearing on the institution decisions.
In remanding the case to the Patent Trial and Appeal Board for rehearing of the privity issue, the en banc Court of Appeals panel first considered the strong presumption favoring judicial review of administrative actions. Considering this, the court found no “clear and convincing” indication from Congress to prohibit review of issues raised under §315. The majority found that the natural reading of §314(d) was limited to issues under §314 – “substantive issues” related to preliminary assessments of patentability. Section 315 does not relate to patentability but to timing. (“The time-bar determination, therefore, is not akin to either the non-initiation or preliminary-only merits determinations for which unreviewability is common in the law, in the latter case because the closely related final merits determination is reviewable.”). In other words, the policy against pseudo interlocutory review of some preliminary administrative decisions is not pertinent to timing issues because final written decisions will not ultimately address said timing issues as they will with patentability questions. Cuozzo’s articulated-grounds standard of §312 was distinguished on this basis because it closely relates to patentability.
In concurrence, Hon. J. O’Malley further highlighted the substantive versus procedural distinction to reviewable issues on IPR institutions indicating that §315 relates to “important procedural rights” versus “core statutory functions.”
Hon. J. Hughes was joined by three others in dissent, arguing that §315 was sufficiently closely related to §314(a) to bar appellate review, pointing to language in Hon. Justice Alito’s concurrence in Cuozzo: “the petition’s timeliness, no less than the particularity of its allegations, is ‘closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate… review,’ and the Court says that such questions are unreviewable.” The dissent reasoned that §314(d)’s bar was not limited to §314 at least because Cuozzo regarded §312. Moreover, the dissent reasoned that because the America Invents Act did not incorporate language from pre-AIA §303(c), which did not bar review of the entire decision to initiate reexamination, the lacking language in the revised statute clearly and convincingly evidenced Congressional intent to bar review under the AIA.
