"Gavel on copy of escrow agreement, soft shadow. White background, soft shadow. Gavel has seen much use. Please see more gavel photos:"An updated discussion of this issue is available here: PTAB’s Time Bar Determinations Are Reviewable by the Federal Circuit

As we had predicted in a previous post, the Federal Circuit, on January 4, 2017, granted patent owner Wi-Fi One LLC’s petitions for rehearing en banc regarding the interpretation of, and interplay between, 35 U.S.C. § 314(d) (the No Appeal provision) and § 315(b) (the Time Bar provision).  A few months ago, we wrote about the related decision Wi-Fi One, LLC v. Broadcom Corp., Appeal 2015-1944 (Fed. Cir. Sept. 16, 2016), which the court’s order vacates:

In Wi­Fi, the patent owner (Wi­Fi One, LLC) argued that the IPR petitioner (Broadcom Corporation) was in privity with entities accused (and eventually adjudged) in parallel district court litigation of infringing the challenged patent. Those entities, the patent owner argued, would have been time­barred from seeking IPR under 35 USC § 315(b).

In the now-vacated decisions, the Wi-Fi court relied on its Achates decision to hold that the “No Appeal” provision of 35 USC § 314(d) prohibits the court from reviewing the PTAB’s determinations to initiate IPR proceedings based on the PTAB’s assessment of the § 315(b) time bar. See id.

The court’s January 4, 2017, order comes after the Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), which suggested that the Federal Circuit may have jurisdiction to take the issue on appeal. In its order, the Federal Circuit solicits briefs addressing the following question:

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?

Oral argument is to be scheduled at a later date.