Broadcom sought inter partes review of three patents owned by Wi-Fi One. In response to Broadcom’s petitions, Wi-Fi One argued that the IPR was barred under 35 U.S.C. § 315(b) because Broadcom was in privity with certain defendants in  a  prior civil action who were served with a complaint alleging infringement of the challenged patents more than a year prior to the filing  of  the  petitions.  The  PTAB  rejected  Wi-Fi One’s arguments and instituted inter partes review. After a trial on the merits, Wi-Fi One appealed the PTAB’s decisions to the Federal Circuit. A panel of the Federal Circuit declined to review the time-bar issue in light of the Court’s precedent  in  Achates Reference Publishing v. Apple, which held that appellate review of the PTAB’s time-bar determinations under § 315(b) was barred by 35 U.S.C. § 314(d).

Enforcing statutory limits on an agency’s authority to act is precisely the type of issue that courts have historically reviewed.

Wi-Fi One sought en banc review, which the Federal Circuit granted to determine whether Achates should be overruled. By a majority of 9-4, the Federal Circuit overturned Achates  and opened the door for appellate review of statutory time bars in IPR proceedings, holding: “The time bar is not merely about preliminary procedural requirements that may be corrected if they fail to reflect real-world facts, but about real- world facts that limit the agency’s authority to act under the IPR scheme.” The majority reasoned that “[e]nforcing statutory limits on an agency’s authority to act is precisely the type of issue that courts have historically reviewed.” Judges Hughes, Lourie, Bryson, and Dyk dissented on grounds that the appeal bar of § 314(d) is “absolute” and extends to the PTAB’s time-bar determinations.

For some, the Court’s holding in Wi-Fi One had been awaited since the Supreme Court decided Cuozzo Speed Technologies v. Lee in 2016. While Cuozzo ultimately held that issues “that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review” are not appealable under § 314(d), it expressly left open the possibility for appeals relating to due process issues, limits on the PTAB’s authority, and other “shenanigans.” Notably, on the same day Cuozzo issued, the Supreme Court summarily granted, vacated, and remanded a petition for writ of certiorari in Click-To-Call Techs., LP v. Ingenio, Inc., YellowPages.com, LLC. Click-to-Call had appealed the Federal Circuit’s refusal to review a time-bar determination, suggesting—at least by implication—that such determinations may be appealable in light of the Supreme Court’s decision in Cuozzo. On remand, the Federal Circuit revisited its decision to dismiss Click-to-Call’s appeal, but the Court concluded that it was bound by Achates—which would need to be overruled by the en banc Court for the panel in Click-to-Call to reach a contrary conclusion. The opportunity to review Achates en banc arose first in Wi-Fi One. Once decided, the Federal Circuit reconsidered Click-to-Call.

Since Wi-Fi One opened the door for parties to appeal the PTAB’s institution determinations, the Federal Circuit has issued several significant decisions on the subject, among them decisions addressing the standards for privity and real-party-in-interest status and the burden-allocation for challenging and defending whether a petition is time-barred.

RELATED CASES

• Click-To-Call Techs., LP v. Ingenio, Inc., YellowPages.com, LLC, 899 F.3d 1321 (Fed. Cir. 2018) (overruling PTAB’s precedent that a complaint dismissed “without prejudice” fails to trigger the time-bar; intervening ex parte reexamination did not preclude triggering time-bar, fact that multiple challengers who filed joint petition did not preclude triggering of time-bar).
• Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., 905 F.3d 1311 (Fed. Cir. 2018) (differing “from Click-to-Call only in that Bennett’s complaint was involuntarily dismissed without prejudice,” observing that “[j]ust as the statute includes no  exception for a voluntarily dismissed complaint, it includes no exception for an involuntarily dismissed complaint.”).
• WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308 (Fed. Cir. 2018) (addressing standard for privity and affirming the PTAB’s determination that the petitioner was not time-barred based on privity with a joined petitioner sued for infringement more than one year prior).
• Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir. 2018) (addressing standard for what qualifies as a “real party in interest” and vacating PTAB’s determination as applying an unduly restrictive test and disregarding or discounting circumstantial evidence).
• Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018) (clarifying the burden-shifting framework for challenging and defending a real party in interest identification; holding that petitioner’s identification can be taken at face value unless challenged by “some evidence”).