Federal Circuit Grants Rehearing En Banc for Reviewability of PTO’s IPR Timeliness Determinations

In a move that could portend a significant change in court review of decisions of the United States Patent and Trademark Office (USPTO) in inter partes review (IPR) cases, on January 4, 2017 the United States Court of Appeals for the Federal Circuit vacated its 2016 opinion in Wi-Fi One v. Broadcom (837 F.3d 1329), and granted rehearing en banc. In the underlying case, Broadcom petitioned the USPTO for IPR of one of Wi-Fi’s patents.

In responding to the petition, Wi-Fi argued, inter alia, that the petition was time-barred under 35 USC § 315(b) (the statute governing the filing of petitions for inter partes review). The USPTO rejected Wi-Fi’s argument, instituted the IPR, and ultimately found that the challenged claims were unpatentable and Broadcom’s petition was not untimely.

On appeal, the Court’s original panel held that the timeliness issue was not appealable, relying on the Court’s prior interpretation of 35 USC § 314(d) (“The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable”) in Achates Reference Publishing, Inc. v. Apple Inc. In granting rehearing en banc, the Court requested supplemental briefing limited to the following issue:

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?

The supplemental briefing period ends on March 29, 2017; no argument date has been set yet. The Achates rule is plainly detrimental to patent owners with significant timeliness defenses undergoing IPR. Should the Court overrule Achates, it could prove very useful to patent owners with such defenses.

A full copy of the Court’s order can be found here: http://www.cafc.uscourts.gov/sites/default/files/sWi-Fi_One_15-1944_Rehearing_Order.pdf

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