{"id":1204,"date":"2016-09-16T13:30:13","date_gmt":"2016-09-16T17:30:13","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1204"},"modified":"2016-09-19T09:31:45","modified_gmt":"2016-09-19T13:31:45","slug":"ptab-decision-to-institute-in-view-of-%c2%a7-315-time-bar-is-not-reviewable","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1204","title":{"rendered":"PTAB Decision to Institute Despite An Alleged \u00a7 315 Time Bar is Not Reviewable"},"content":{"rendered":"

In Wi-Fi One, LLC v. Broadcom Corporation<\/em>, [2015-1944] (September 16, 2016), the Federal Circuit affirmed the PTAB’d decision in IPR2013-00601 that the claims of U.S. Patent No. 6,772,215 were anticipated.<\/p>\n

Wi-Fi argued\u00a0that\u00a0Broadcom was barred from petitioning for inter partes\u00a0review under 35 U.S.C.\u00a0\u00a7 315(b) \u00a0because it was in privity with a time-barred district\u00a0court litigant. \u00a0To determine whether a petitioner is in privity\u00a0with a time-barred district court litigant, the Board\u00a0conducts a flexible analysis that \u201cseeks to determine\u00a0whether the relationship between the purported \u2018privy\u2019\u00a0and the relevant other party is sufficiently close such that
\nboth should be bound by the trial outcome and related\u00a0estoppels.\u201d Office Patent Trial Practice Guide, 77 Fed.\u00a0Reg. 48,756, 48,759 (Aug. 14, 2012).<\/p>\n

The Federal Circuit also rejected Wi-Fi’s substantive challenges<\/p>\n

In Achates<\/em> the Federal Circuit held that 35 USC 314(d) \u201cprohibits\u00a0this court from reviewing the Board\u2019s determination to\u00a0initiate IPR proceedings based on its assessment of the\u00a0time-bar of \u00a7 315(b), even if such assessment is reconsidered
\nduring the merits phase of proceedings and restated\u00a0as part of the Board\u2019s final written decision.\u201d \u00a0Wi-Fi argued that\u00a0the\u00a0Supreme Court\u2019s recent decision in Cuozzo Speed Technologies,<\/em>LLC v. Lee<\/em>, implicitly\u00a0overruled Achates. \u00a0Also the Supreme Court held that institution decisions were generally unreviewable, the court emphasized that:<\/p>\n

our interpretation\u00a0applies where the grounds for\u00a0attacking the decision to institute inter partes review\u00a0consist of questions that are closely tied to\u00a0the application and interpretation of statutes related\u00a0to the Patent Office\u2019s decision to initiate inter\u00a0partes review. This means that we need not,\u00a0and do not, decide the precise effect of \u00a7 314(d) on\u00a0appeals that implicate constitutional questions,\u00a0that depend on other less closely related statutes,\u00a0or that present other questions of interpretation\u00a0that reach, in terms of scope and impact, well beyond\u00a0\u201cthis section.\u201d \u00a0Thus, contrary to the dissent\u2019s\u00a0suggestion, we do not categorically preclude\u00a0review of a final decision where a petition fails to\u00a0give \u201csufficient notice\u201d such that there is a due\u00a0process problem with the entire proceeding, nor\u00a0does our interpretation enable the agency to act\u00a0outside its statutory limits by, for example, canceling\u00a0a patent claim for \u201cindefiniteness under\u00a0\u00a7 112\u201d in inter partes review. Such \u201cshenanigans\u201d\u00a0may be properly reviewable in the context of \u00a7 319\u00a0and under the Administrative Procedure Act,\u00a0which enables reviewing courts to \u201cset aside agency\u00a0action\u201d that is \u201ccontrary to constitutional\u00a0right,\u201d \u201cin excess of statutory jurisdiction,\u201d or \u201carbitrary\u00a0[and] capricious.\u201d<\/p><\/blockquote>\n

However, the Federal Circuit saw nothing in Cuozzo that overruled Achates. \u00a0The Federal Circuit found that \u00a7315 was precisely the kind of statute “closely tied to the application\u00a0and interpretation of statutes related to the Patent\u00a0Office\u2019s decision to initiate inter partes review\u201d that the Supreme Court said was unreviewable.<\/p>\n

 <\/p>\n

The Federal Circuit also rejected the patent owner’s substantive arguments, finding no error in the PTAB’s determination that the challenged claims were anticipated.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Wi-Fi One, LLC v. Broadcom Corporation, [2015-1944] (September 16, 2016), the Federal Circuit affirmed the PTAB’d decision in IPR2013-00601 that the claims of U.S. Patent No. 6,772,215 were anticipated. Wi-Fi argued\u00a0that\u00a0Broadcom was barred from petitioning for inter partes\u00a0review under … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[26],"tags":[],"class_list":["post-1204","post","type-post","status-publish","format-standard","hentry","category-inter-partes-review"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1204","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1204"}],"version-history":[{"count":4,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1204\/revisions"}],"predecessor-version":[{"id":1215,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1204\/revisions\/1215"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1204"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1204"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1204"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}