On June 7, 2018, the Federal Circuit in Wi-Fi One, LLC v. Broadcom Corp. requested that intervenor, Patent Office director Andrei Iancu, and appellee Broadcom, file a response to Wi-Fi One’s second petition for rehearing.  Wi-Fi One, Case No. 2015-1944, Docket No. 212 (June 7, 2018).  At issue was whether the court should grant Wi-Fi One’s second petition for panel or en banc rehearing regarding 35 U.S.C. § 315 (b) time-bar challenges.  See Wi-Fi One, LLC v. Broadcom Corp., Case No. 2015-1944, Doc. No. 210 (May 21, 2018).

Wi-Fi One’s second petition follows each of: (1) a now-vacated panel decision that PTAB decisions on § 315 (b) time-bar challenges are not appealable, (2) an en banc decision holding that PTAB time-bar determinations are, in fact, appealable, and (3) a second panel decision that upheld the PTAB’s decision that Broadcom’s IPR petition was not time-barred.  See Wi-Fi One, LLC v. Broadcom Corp., Case No. 2015-1944.  In the second panel decision, the majority affirmed the PTAB’s position that Broadcom was not a “real party in interest” or a “privy” for purposes applying the § 315 (b) time-bar.  Wi-Fi One, Case No. 2015-1944 at 18 (April 20, 2018). In dissent, however, Judge Reyna stated that “[t]he majority concludes that to establish privity, a petitioner must have had control over the prior district court litigation. This narrow standard will make it difficult for a patentee to successfully assert § 315(b).”  Wi-Fi One, Case No. 2015-1944 at 1-2 (April 20, 2018) (Reyna, J., dissenting).  According to Judge Reyna, “[p]rivity may exist in other forms that do not involve control over the prior litigation.”  Id.

Judge Reyna’s dissent seemingly set the stage for Wi-Fi One’s second petition.

In its second petition, Wi-Fi One seemed to invite the Patent Office’s response, stating that “[g]iven the USPTO’s recent public comments promising to promote fairness for patent owners, the PTAB on remand likely would self-correct and handle the § 315(b) issue much differently.”  Wi-Fi One, LLC v. Broadcom Corp., Case No. 2015-1944, Doc. No. 210 (May 21, 2018) (citing USPTO Director Andrei Iancu, Remarks before the Senate Committee on the Judiciary (April 18, 2018)).

Wi-Fi One’s statement references director Iancu’s earlier acknowledgement of a study that suggests that the current administration of AIA trials may be weakening the U.S. patent system: “I am aware of strong opinions of various parts of the IP stakeholder community with respect to the conduct of AIA trials.  For example, a recent Chamber of Commerce study noted that the post-grant proceedings at the PTAB were a factor contributing to the drop of the U.S. patent system in its annual rankings.”  Statement of Director Andrei Iancu before the Senate Committee on the Judiciary (April 18, 2018).  Director Iancu also commented on how he hoped to improve PTAB operating procedure “to ensure that the Office’s review in these proceedings is consistent with the intent of the AIA, and the overall goals of predictable, high quality patent rights.”  Id.

With respect to § 315(b) determinations, Wi-Fi One requested that the Federal Circuit vacate the second panel decision and remand the case to the PTAB with instructions to: (1) accept certain indemnity agreements into evidence (e.g., allegedly demonstrating a §315(b) time-bar); (2) write an opinion that states its findings, including conclusions and supporting reasons on the § 315(b) issue; and (3) follow the PTAB’s own Trial Practice Guide and consider all the relevant “Taylor factors” and the totality of circumstances when the PTAB decides privity issues under § 315(b).  See Wi-Fi One, LLC v. Broadcom Corp., Case No. 2015-1944, Doc. No. 210 at 5 (May 21, 2018).

Given that parties may now challenge § 315(b) time-bar determinations on appeal, and in view of director Iancu’s comments, one would expect the PTAB to develop more bright-lined procedures for addressing such decisions—if not on remand from the Wi-Fi One case, then likely in future § 315(b) cases.