Full Federal Circuit to Review Appeals of PTAB Time-Bar Decisions

Written by John Dragseth

The hottest recent decisions from the Federal Circuit have centered on post-grant proceedings at the Patent Trial and Appeal Board (PTAB). One such issue involves when the PTAB is immune from appellate review of decisions it makes when it institutes a post-grant proceeding, like aninter partesreview petition (IPR). The Supreme Court held in Cuozzo Speed Technologies v. Lee, 579 U.S. ___ (2016) , that decisions made at institution are generally unreviewable, under the command of 35 U.S.C. 314 that such decisions "shall be final and nonappealable." But the Supreme Court noted it was not deciding whether appellate review is available for PTAB decisions that are not "closely tied to the application and interpretation of statutes related to the Patent Office's decision to initiate interpartes review." The Cuozzo Court gave two examples that could be subject to review: (a) an IPR petition did not give fair notice and due process and (b) the PTAB institutes an IPR under 35 U.S.C. 112, which is an example of "shenanigans" the PTAB could not possible get into. On January 4, the Federal Circuit voted to take the point en banc inWi-Fi One, LLC v. Broadcom Corp., Docket Nos. 2015-1944, -1945, -1946, where the issue is whether the Federal Circuit can review the PTAB's determination that the underlying IPRs were filed within the 1-year window of 35 US.C. 315(b). Some judges have suggested that Cuozzo implicitly suggested that such issues should be reviewable because they are not "closely tied" to determining whether prior art submitted in an IPR anticipates the patent claims or renders them obvious. Similar issues that may be affected by this decision include who the "real party in interest" is behind an IPR (under 35 U.S.C. 312), whether a too-late IPR petition can be joined with an in-time petition to avoid the one-year problem (under 35 U.S.C. 315), and whether a subsequent IPR petition is estopped by the filing of an earlier petition (under 35 U.S.C. 315). The Court has scheduled briefing to conclude at the end of March, with oral argument scheduled thereafter - probably around May. A decision should issue next Summer. Stay tuned to Fish Post-Grant Alerts for further updates.