{"id":1904,"date":"2018-01-09T00:20:29","date_gmt":"2018-01-09T05:20:29","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1904"},"modified":"2018-01-10T09:14:16","modified_gmt":"2018-01-10T14:14:16","slug":"directors-time-bar-determinations-under-%c2%a7-315b-are-not-exempt-from-judicial-review","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1904","title":{"rendered":"Director\u2019s Time-Bar Determinations under \u00a7 315(b) are not Exempt from Judicial Review"},"content":{"rendered":"

In Wi-Fi One, LLC v. Broadcom Corp.<\/a>, [2015-1945, 2015-1946](January 8, 2018) the Federal Circuit, en banc,\u00a0held that the bar on judicial\u00a0review of institution decisions in 35 U.S.C. \u00a7314(d) does not apply to timebar\u00a0determinations made under \u00a7 315(b), overruling\u00a0Achates
\nReference Publishing, Inc. v. Apple Inc., 803 F.3d 652, 658\u00a0(Fed. Cir. 2015).<\/p>\n

Wi-Fi argued that the\u00a0Director lacked authority to institute IPRs under
\n\u00a7315(b) because petitioner Broadcom was in privity the defendants that the prior owner of the patents (Ericsson) served with an infringement complaint more than a year before Broadcom filed the IPRs.\u00a0 The Board nonetheless instituted the IPRs, finding that Wi-Fi Wi-Fi had not shown that Broadcom\u00a0was in privity with the defendants in the prior litigation.\u00a0 In its Final Written Decision, the challenged claims were found unpatentable.<\/p>\n

Wi-Fi appealed the Final Written Decisions, asking the Federal Circuit to\u00a0reverse or\u00a0vacate the Board\u2019s time-bar determinations, but a panel of the Federal Circuit found the \u00a7315(b) time-bar rulings nonappealable under Achates.\u00a0\u00a0Wi-Fi petitioned for rehearing en banc, asking the Federal Circuit to consider whether\u00a0Achates should be overruled, and hold that the Director\u2019s \u00a7 315(b) time-bar\u00a0determinations are subject to judicial review.<\/p>\n

The majority started its analysis with the the \u201cstrong presumption\u201d
\nfavoring judicial review of administrative\u00a0actions, including the Director\u2019s IPR institution decisions.\u00a0\u00a0In view of this strong presumption, the Federal Circuit said it would abdicate\u00a0judicial review only when Congress provides a \u201cclear and\u00a0convincing\u201d indication that it intends to prohibit review.\u00a0 The Federal Circuit found no clear and convincing indication in the specific\u00a0statutory language in the AIA, the specific legislative
\nhistory of the AIA, or the statutory scheme as a whole\u00a0that demonstrates Congress\u2019s intent to bar judicial review\u00a0of \u00a7 315(b) time-bar determinations.<\/p>\n

The Federal Circuit said that\u00a0\u00a7315(b), which controls the Director\u2019s authority\u00a0to institute IPR that is unrelated to the Director\u2019s preliminary\u00a0 patentability assessment or the Director\u2019s discretion\u00a0not to initiate an IPR even if the threshold \u201creasonable\u00a0likelihood\u201d is present.\u00a0\u00a0Because \u00a7314(a) does not mention the timer bar, the\u00a0PTO\u2019s position that the time-bar determination is unreviewable\u00a0runs counter to the principle, as reflected in\u00a0Cuozzo, that favors reading the statute to comport with,\u00a0not depart from, familiar approaches to comparable\u00a0issues.\u00a0 The majority found this reading was\u00a0consistent with the overall statutory\u00a0scheme as understood through the lens of Cuozzo\u2019s directive\u00a0to examine the statutory scheme in terms of what\u00a0is \u201cclosely related\u201d to the \u00a7 314(a) determination.<\/p>\n

The Federal Circuit concluded that\u00a0whether a petitioner has complied with \u00a7315(b) has nothing to do with the\u00a0patentability merits or discretion not to institute.\u00a0\u00a0Thus, the majority said that the statutory scheme as a whole demonstrates\u00a0that \u00a7 315 is not \u201cclosely related\u201d to the institution decision\u00a0addressed in \u00a7 314(a), and it therefore is not subject\u00a0to \u00a7314(d)\u2019s bar on judicial review.<\/p>\n

Moreover the Federal Circuit observed that\u00a0timely filing of a petition under \u00a7 315(b) is a condition\u00a0precedent to the Director\u2019s authority to act, and said that enforcing statutory limits on an agency\u2019s authority to
\nact is precisely the type of issue that courts have historically\u00a0reviewed.<\/p>\n

The Federal Circuit said that the Supreme Court in Cuozzo instructed that the\u00a0\u201cstrong presumption\u201d favoring judicial review \u201cmay be\u00a0overcome by \u2018\u201cclear and convincing\u201d\u2019 indications, drawn\u00a0from \u2018specific language,\u2019 \u2018specific legislative history,\u2019 and\u00a0\u2018inferences of intent drawn from the statutory scheme as a\u00a0whole,\u2019 that Congress intended to bar review.\u201d However, finding no such clear and convincing indications, the Federal Circuit held\u00a0that the Director\u2019s time-bar determinations\u00a0under \u00a7315(b) are not exempt from judicial review, and\u00a0overruled Achates\u2019s contrary conclusion.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Wi-Fi One, LLC v. Broadcom Corp., [2015-1945, 2015-1946](January 8, 2018) the Federal Circuit, en banc,\u00a0held that the bar on judicial\u00a0review of institution decisions in 35 U.S.C. \u00a7314(d) does not apply to timebar\u00a0determinations made under \u00a7 315(b), overruling\u00a0Achates Reference Publishing, … 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-1904","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\/1904","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=1904"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1904\/revisions"}],"predecessor-version":[{"id":1906,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1904\/revisions\/1906"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1904"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1904"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1904"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}