Wi-Fi One, LLC v. Broadcom Corporation
878 F.3d 1364
| Fed. Cir. | 2018Background
- The America Invents Act created inter partes review (IPR) and directed that the Director’s determination whether to institute IPR "shall be final and nonappealable" (35 U.S.C. § 314(d)); § 315(b) bars institution if a petition is filed more than one year after the petitioner (or its real party in interest or privy) was served with a complaint alleging infringement.
- Broadcom filed IPR petitions against Ericsson patents; Wi‑Fi (later owner) argued the petitions were time‑barred under § 315(b) because related defendants had been sued more than one year earlier.
- The PTAB instituted the IPRs, found the claims unpatentable, and resolved that Broadcom was not in privity with the sued defendants.
- A Federal Circuit panel, relying on Achates, held § 314(d) bars judicial review of § 315(b) time‑bar determinations and affirmed. Wi‑Fi sought en banc review.
- The en banc Federal Circuit revisited whether § 314(d)’s nonappealability covers § 315(b) time‑bar determinations and whether Achates should be overruled.
Issues
| Issue | Plaintiff's Argument (Wi‑Fi) | Defendant's Argument (Broadcom/PTO) | Held |
|---|---|---|---|
| Whether § 314(d) bars judicial review of § 315(b) time‑bar determinations | § 314(d) does not bar review; § 315(b) limits the Director’s authority to institute and is not part of § 314(a)’s merit‑related reasonable‑likelihood inquiry | § 314(d) makes institution decisions final and nonappealable, so time‑bar rulings at institution are unreviewable | Time‑bar determinations under § 315(b) are reviewable; Achates overruled |
| Whether Cuozzo compels nonreviewability of § 315(b) challenges | Cuozzo left open review for matters outside § 314(a) and for agency actions exceeding statutory limits | Cuozzo treated related petition requirements as nonappealable and supports Achates | Cuozzo does not compel nonreviewability here; § 315(b) is not "closely related" to § 314(a) institution determination |
| Whether § 315(b) is a merits‑linked, preliminary procedural issue like § 312(a)(3) | § 315(b) is a jurisdictional/time limit and not a merits or petition‑sufficiency question; it constrains PTO authority | The time‑bar is addressed at institution and is therefore part of the Director’s determination to institute | § 315(b) is distinct from § 314(a)/§ 312(a)(3) and is appealable |
| Whether courts should enforce statutory limits on agency authority (ultra vires) | Courts should review to ensure the PTO does not act beyond statutory authority | PTO decisions to institute are generally committed to agency discretion and insulated from appeal under § 314(d) | Courts may review whether the PTO exceeded its statutory authority under § 315(b) |
Key Cases Cited
- Achates Reference Publ’g, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) (panel held § 314(d) bars review of § 315(b) time‑bar determinations)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) (Supreme Court held § 314(d) bars review of issues closely tied to the § 314(a) institution decision but left open certain categories of review)
- Kucana v. Holder, 558 U.S. 233 (2010) (presumption favoring judicial review where a statute is reasonably susceptible to review)
- Lindahl v. Office of Pers. Mgmt., 470 U.S. 768 (1985) (acknowledging circumstances where Congress’ text can preclude judicial review and discussing related limits)