Federal Circuit allows appeal of PTAB time-bar decisions

On January 8 2018 the US Court of Appeals for the Federal Circuit held en banc that Patent Trial and Appeal Board (PTAB) time-bar decisions relating to inter partes review petitions can be appealed. The nine-to-four ruling in Wi-Fi One LLC v Broadcom Corp overturned previous Federal Circuit decisions which denied such appeals.

By statute, an inter partes review petition seeking to review a patent cannot be filed more than one year after the date on which the petitioner, or a company it has a legal relationship with, is served in an infringement lawsuit involving that patent.

Broadcom filed an inter partes review petition which sought to review Wi-Fi One’s messaging patent more than one year after Wi-Fi One had filed a patent infringement lawsuit against several companies. While Broadcom was not named as a defendant in the lawsuit, Wi-Fi One challenged the inter partes review petition on the grounds that Broadcom worked with the defendants, and thus had a legal relationship with them.

In its decision, the PTAB:

• refused discovery on Broadcom’s relationship with the defendants;
• granted the petition; and
• invalidated the patent.

A Federal Circuit panel affirmed, holding that the time-bar issue could not be appealed.

The Federal Circuit majority reversed, affirming the “strong presumption in favour of judicial review of agency actions”. The court held that “the time-bar is not a technicality… but a substantive limit on [the] PTAB’s authority”.

The decision is beneficial to patent owners which have raised or will raise the time-bar issue. While the decision did not confirm whether other issues were subject to appeal, it essentially invited inter partes review participants to appeal other threshold issues (eg, the identification of all interested parties) that are required when instituting an inter partes review or related proceeding.