Wi-Fi One, LLC v. Broadcom Corporation

аbove, zos, Moreover, explained provide as and because the USCP did not investigate comparator USCP’s failure to a qualified cases which sub- qualified substitute worked-the C-2 shift emergency stitute worked holdover suggests discipline Offi- that its shift, finding pretext sup- Board’s cer pretextual. Konczos The USCP was ported evidence. substantial not obligated contends it was inves-

tigate for Of- whether a substitute worked Conclusion ficer Konczos there still a was because (or hour) supports Substantial evidence during of 14 period minutes Hearing Board’s Offi- which neither Officer nor affirmance Konczos Officer working. findings Law Because Officer Konc- cer’s the USCP engaged was his emergency zos had practices by issuing transferred unfair labor Officer through channels, (cid:127) holdover shift informal Konczos . still, view, he responsi- USCP’s Discipline Warning. Command We ble shift until Officer Law arrived. therefore affirm Board’s decision. Again, present any poli- USCP did requiring cies Officer Konczos to report AFFIRMED emergency location .the holdover rеplacement. shift and wait for his

Further, comparator that the cases cites inapposite.

USCP because those

cases instances which address there was paperwork

an issue with the CP-1301

the substitute failed to officer work the comparator shift. The closest

additional LLC, Appellant ONE, WI-FI presents case USCP one in assigned which Officer 1 was an additional v. shift; Officer 1 transferred his duties to CORPORATION, Officer 2 but not fill did out a CP-1301 BROADCOM form; and Officer 2 failed up Appellee show instance, duty additional shift. Joseph Matal, Performing Officer was absent without deemed leave. the Functions cases, Unlike those where was Secretary uncertain of the Under Duties from the record whether the officer as- Property Intellectual Commerce signed actually shift additional ob- Director, U.S. Patent and Trade substitute, qualified tained a it is clear that Office, mark Intervenor Officer a qualified Konczos obtained sub-

stitute Officer because Law actually One, Appellant Wi-Fi emergency worked the shift. In holdover fact,- in only Officer Law clocked min- n out; utes after Officer Konczos clocked Corporation, Appellee Broadcom And at no time Sergeant Floyd com- did plаin, to shortage the USCP about a Joseph Matal, Performing the Functions personnel. Secretary Under and Duties

Accordingly, light Property Commerce for investiga- Intellectual inquire Director, tion’s failure into U.S. Patent and Trade whether a Office, substitute place worked in of Office Konc- mark Intervenor One, Appellant Wi-Fi Appellee Corporation,

Broadcom Matal, Performing

Joseph the Functions Secretary of Under

and Duties Property

Commerce for Intellectual Director, Patent and Trade Office,

mark Intervenor

2015-1944

2015-1945

2015-1946 of Appeals,

United States Court Circuit.

Federal January

Decided:

Eugene M. Belk- Patterson Gelernter, LLP, York, NY, nap Tyler Webb & New for amicus curiae New York Intellectual Property represent- Law Association. Also ed Royzman, Vitullo; Irena Jason Wal- Jr., Hanley, Takhistova, ter E. Ksenia LLP, York, Kenyon Kurth Andrews New NY; LLP, Robert M. Venable Isackson, York, NY; New Rando, Robert J. P.C., Firm Syosset, Rando Law NY. Ewing Saul Trujillo, Doreen Yatko LLP, PA, Wayne, for amicus curiae Feder- Bar represent- al Circuit Also Association. IP ed Neifeld Neifeld, Richard Alan Law, Alexandria, PC, VA. Lynn Freeman, McCarter & En-

Kia LLP, MA, glish, Boston, for amicus curiae Boston rep- Patent Law Association. Also by Erik Paul resented Belt. Texas A&M Vishnubhakat,

Saurabh Law, Worth, TX, University Fort School Bartоw, for amici curiae Ann Michael Risch, Dolin, Sichelman, Gregory Ted M. Douglas Smith, Cawley, McKool Aaron Holman, Christopher Michael Saurabh PC, Dallas, TX, argued appellant. for Also ‍‌‌‌‌‌‌‌‌​​​‌​​​‌​‌​‌​‌​‌‌‌‌​​‌‌​‌‌‌​​​‌​‌‌​‌​‌‌​‍Vishnubhakat, Kesan, Jay P. Irina D. represented by Donald Nelson Manta, Adam Mossoff. Puckett, PC, Worth, TX; Fort Bumgardner Peter Finnegan, Henderson, Arner, Erika Ayers, J. Law Office of Peter J. Ayers, Farabow, Dunner, LLP, Reston, Garrett & Austin, TX. VA, for amicus curiae American Intellectu- E. Pick- Wilmer Cutler Massa, Dominic Property al Law Also repre- Association. LLP, Boston, ering MA, Dorr Hale and sented Daniel C. Tucker; Joshua argued appellee. Also represented by DC; Washington, Mark L. Goldberg, Goldman, Lopez, Zach- Kevin Janine Marie LLP, & Morrison Foerster Whitaker, ary Piccolomini, Katie Saxton. Washington, DC. Staff, Appellate Mark R. Civil Freeman, J. Lowenstein & Weatherwax, Kenneth Division, Department of United States LLP, CA, Angeles, Los Weatherwax Justice, DC, Washington, argued for inter- Biotechnology amicus curiae Innovation Joyce represented by venor. Also R. Bran- Organization. rеpresented by Also Nathan da, Patterson, Riley¡ Melissa N. Nicolas Steinberg. Jonathan H. Lowenstein, Nobu Kelley, Caprihan, K. Nathan Kakoli Ben- jamin Jackson Walker Jordan, T. Hickman, Krause, Sean Daniel Thomas W. LLP, Austin, TX, for amicus curiae West- Lynch, Of- Weidenfeller, Frances Scott Solicitor, fice of ernGeco LLC. United States Patent Office,Alexandria, and Trademark VA. Jeffrey LLP, A. MoloLamken Lamken, Jeremy Cooper Doerre, DC, Wright Washington, Tillman for amicus curiae Elm PLLC, Charlotte, NC, Innovations, as amicus curiae. 3DS LLC. REYNA,

Gregory Judge. Circuit Day, A. Jones Wash- Castanias, DC, for curiae ington, amicus Intellectual prohibited has repre- Also Property Owners Association. the United States Patent and Trademark Cleveland, by David B. sented Cochran, instituting Office Mayer- OH; Marlott, Israel Sasha John requesting review is Chicago, W. Lauroesch, goyz, IL; Mark year petition- filed more than one after the Association, Property Intellectual Owners er, interest, privy DC; Miller, Proc- Washington, Steven W. complaint served with a OH; Cincinnati, Company, ter & Gamblе infringement. 35 U.S.C. Proper- H. 3M Innovative Rhodes, Kevin Congress also provided that the Director’s Paul, Company, ties St. MN. determination “whether to institute an in- Joseph Stanley III, DLA ter review under this section shall Panikowski, 314(d). LLP, CA, nonappealable.” be final and Diego, for amici Piper US San question us is whether bar OTC before Corporation, curiae Oracle Oracle on of institution review decisions in Subsidiary, represented by LLC. Also CA; Fowler, Alto, applies to time-bar determina- D. East Palo Mark In Heintz, Reston, tions made under Achates VA. James Martin Inc., Publishing, Apple Inc. Reference Joseph Sidley Austin LLP, Guerra, 652, 2015), panel 803 F.3d DC, Washington, Apple for amicus curiae of this in court held' the affirmative that Anthony represented by Also Inc. Thomas time-bar determination is final Jeffrey III, Broughan, Paul Kushan. 314(d). nonappealable Today, Clement, Kirkland Ellis Paul D. & question court revisits this en banc. DC, LLP, Washington, for amicus curiae recognize strong in We represented by Corporation. Intel Also favor of review of actions. George Sopan Joshi, Chicаgo, Hicks, Jr.; W. presumption, Congress To overcome this IL; Corpora- Intel Hult, Matthew John clearly convincingly must indicate its Clara, tion, Santa CA. prohibit judicial intent review. We find PROST, Judge, Before Chief convincing no clear and indication DYK, NEWMAN, LOURIE, BRYSON,1 congressional intent. We therefore hold O’MALLEY, MOORE, REYNA, time-bar determinations under CHEN, WALLACH, TARANTO, Achates’s appealable, overrule HUGHES, STOLL, Judges. Circuit conclusion, contrary and remand these panel proceedings for further cases Opinion by for court filed Circuit this opinion. consistent with Reyna, Judge Prost Judge which Chief Newman, Moore, Judges and Circuit Background I. Wallach, Taranto, Chen, and O’Malley, A. America Invents Act join. Stoll 2011, Leahy- passed Concurring opinion filed Circuit (“ALA”), America Invents Act which Smith Judge O’Malley. (“IPR”) pro- inter review created 6(a)- 112-29, § L. Dissenting opinion ceedings. Circuit See Pub. No. filed (2011); (c), 125 Stat. 299-305 Judge Hughes, Judges which Circuit pro- Lourie, post-grant §§ IPR and other Bryson, Dyk join. 311-319. January Judge Bryson assumed senior status Circuit ceedings are quick procedural pre- intended to be and cost nary requirements and litigatiоn effective alternatives to liminary for third regarding likely challenge patentability parties unpatentability. example, Section for Rep. H.R. No. pt. claims. governs the relationship issued between IPRs 2,710 (2011); (2011) Cong. at 48 Rec. proceedings and other conducted outside (statement of Grassley). Sen. Sections 31Í provision the IPR process. issue may of Title establish who and-312 315(b), appeal, provides in this that “[a]n IPR, grounds for may be instituted if IPR, permitted time an earliest for a petition requesting proceeding IPR, requirements petition for an more than 1 year filed after the date on IPR. Under interest, petitioner, which the patent is not the owner person who or privy of the served with Director to petition the .complaint alleging infringement pat- on permitted claims patent one or more one-year ent.” time not ap- bar does unpatentability on alleging cer- grounds, §,.315(c). ply request joinder to a provides prior art Section 312 tain bases. of’ Section addresses the “conduct must, among things, that the other IPRs, including amendments writing “identify], particulari- and with evidentiary standards. Section 317 ad- challenged, grounds ty, claim each dresses settlement. based, challenge ‘ which each claim ' If the Director determines to institute the that supports evidence the IPR, cases, in most the Board must “issue grounds challenge to each for the claim.” 312(a)(3). § a final respect written decision with provides Section 313 patent prelimi- patentability any that file a of patent the owner claim chal- nary response petition. to lenged by the petitioner,” the well as as during new claims added IPR. 35 U.SU. (a) § prescribes In subsection the 318(a). § party to IPR Any “dissatisfied” required for “determination]” threshold with the final may appeal written decision a Director to institute: “reasonable 141(c), §§ that decision to this court. Id. that will likelihood” succeed challenge patentability at one least challenged patent claims. Subsec- B. Achates (b) (c) prescribe tions of timing the. requirements for the panel and notice institution a this court of decided 314(d) § judicial decision. And addresses issue before today: same us whether 314(d) the Director’s IPR § precludes' review of § Specifically, determination § time-bar In Ac- determinations. 314(d) § provides “[t]he determination hates, patent the Board canceled certain by the Director to institute an whether through claims IPR. 803 F.3d at 653. On inter review under this section shall appeal, patent argued owner nonappealable.”2 be final and (emphasis outside of its Board acted au- added). thority by instituting petition § provi-

The remainder of the that was IPR-related time-barred under Id. beyond AIA go prelimi- panel rejected sions argument, The this hold- delegated authority 2. The Director constitutionally statutorily permissible. has Appeal LP, IPR to the Trial institute Endo-Surgery, Ethicon Inc. v. Covidien ("the Board"). 42.4(a), §§ Board C.F.R. 812 F.3d delegation 42.108. We have held this to be § prohibits ing pre- that “35 U.S.C. Court Supreme held that reviewing sumption de- court from the Board’s favor of this review was regarding IPR proceedings overcome whether a termination initiate met,the 312(a)(3). § requirements of the time bar Id. at on her assessment based n 315(b), 2142. The if such Court the dispute even assessment considered 312(a)(3)’s about particularity require- during phase reconsidered merits ordinary “an dispute” ment over part as proceedings restated Director’s institution decision. Id. at 2139. Id. 658. Ac- final written decision.” 314(d) “must, The Court misin- concluded that cording panel, the Board’s least, appeal at the forbid an not consti- attacks terpretation ... ‘determination whether institute’ re- might action tute ultra vires by raising legal question view kind Id. at support judicial review. otherwise (alteration original). little more.” Id. Concluding that this court 658-59. spoke The Court “the of'initial decisions, kind reviewing barred from issue here—that there is jurisdic- for-lack of panel dismissed a ‘reasonable likelihood’ that the claims are tion. Id. at 659. unpatentable grounds asserted.” C. Cuozzo 314(a)). (quoting held: Achates, Subsequent to our patent merely challenges decision where holder Speed Court decided Cuozzo thе Patent Office’s “determin[ation] —Lee, U.S. -, Technologies, LLC v. presented the information (2016). In 136-S.Ct. ... shows that there is reasonable the Court addressed whether respect of success to at likelihood” “with bars challenged,” determina the claims least compliance 314(a), regarding tions or where a holder 312(a)(3), ie., iden grounds its claim in “each particularity tified with sufficient related to review, 314(d) challenged, grounds

claim on which partes bars based, challenge to each claim and the view. for the supports grounds that

evidence (alterations original). The Id. at challenge to Id. at 2139-42. each claim.” question of Supreme Court noted that pleaded par- with a was analysis Court’s The ticularity amounted to “little more than 314(d) began recognition of the with a “ conclusion, challenge to the Patent Office’s ‘strong presumption’ in favor 314(a), pre- that the under ‘information (quoting Id. at 2140 Mach Min- review.” — petition’ review.” sented warranted -, EEOC, ing, LLC v. words, challenge In Id. the Court’s (2015)). 1645, 1651, 191 S.Ct. sufficiency presented the “information explained The Court ‍‌‌‌‌‌‌‌‌​​​‌​​​‌​‌​‌​‌​‌‌‌‌​​‌‌​‌‌‌​​​‌​‌‌​‌​‌‌​‍that the petition” nonappealable was a “may of ‘ overcome ’ claim. 2142. “mine-run” Id. indications, convincing” “clear and ‘specific ‘specific language,’ statutory the’ drawn contends that dissent 314(d) of in- legislative history,’ pro- language ‘inferences “is absolute Dissenting Op. at exceptions.” from the as a tent drawn scheme vides no whole,’ Supreme Court Cuozzo re- that intended to bar re- The Court made (quoting Cmty. Id. Nutri- contention. jected view.” Block this limited; it ex- Inst., holding was clear that S.Ct. review, for (1984)). open potential left pressly 81 L.Ed.2d 270 circumstances, certain of decisions D. Appeal under The Present First, empha- to institute IPR. the Court In Telefonaktiebolaget LM Erics- “interpretation applies sized that its where (“Ericsson”) complaint son in- filed its for grounds attacking for the decision to 6,772,215 fringement of U.S. Nos. institute inter review consist (“’215 (“’568 6,466,568 patent”), patent”), closely that questions appli- tied to the (“’625 6,424,625 patent”) in the United cation interpretation statutes relat- District States the Eastern Dis- decision, emphasizing ed to” the institution against trict of multiple Texas defendants.4 language the “under section” trial, progressed jury The case citation that follows. 136 where stating holding (quoted In jury found that the infring- defendants above), “closely the Court further tied the ed the asserted claims. court re- specific “reason- related” Ericsson, viewed determination. that Inc. able likelihood” made Inc., Sys., v. D-Link 773 F.3d 1201 314(a). expressly Id. at 2142. The Court (“Broad- Corporation Broadcom precise declined “decide the effect of com”), here, appellee was never de- appeals implicate that consti- fendant in litigation. questions, depend tutional on other statutes, separate Broadcom three less pres- related filed ’215,’568, questions interpretation petitions ent other for IPR of the ’625 reach, in scope impact, terms of well patents.5 When filed the IPR Broadcom (em- beyond ‘this Id. at 2141 section.’”3 petitions, Ericsson patents. owned these added). phases Second, the Court noted During pendency IPRs, Erics its holding “categorically does son ownership transferred of the three preclude review a final decision where patents One, (“Wi-Fi”). to Wi-Fi give fails to ‘sufficient notice’ such In response to petitions, Broadcom’s Wi- process problem that there is a due argued Fi that the Director prohibited proceeding.” Finally, the entire from instituting review on of the three holding Court wrote that its “en- petitions. Specifically, argued Wi-Fi able the to act outside its authority lacked by, example, canceling limits a patent IPR because Broadcom claim 112’ in ‘indefiniteness under was in privity with defendants that were Id. at review.” 2141-42. “Such complaint served with a ‘shenanigans,’” Court, according to the Eastern litigation. District of “may properly be Texas alleged reviewable Wi-Fi context §of 319 the IPR petitions and under were Administrative therefore Procedure Act.” Id. at 2142. time-barred under because Erics- Bell, Inc., International, 3. The dissent's reliance on Briscoe v. 432 kin In Toshiba America 404, 2428, Inc., Systems, U.S. 97 S.Ct. 53 L.Ed.2d 439 Corp. formation аnd Toshiba (1977), Cuozzo, misplaced. Corp. Unlike Briscoe Intel intervened and Ericsson amended does complaint not address whether a as a section to add Intel See defendant. Inc., precluding judicial review of Sys., determinations Ericsson Inc. v. D-Link No. 6:10- CV-473, 4046225, apply (E.D. "under this section” would to determi- 2013 WL *24 at n.1 6, 2013), any nations made Aug. part, other section of that Tex. vacated in aff'd (Fed. or part, part, a different statute. 1201 rev’d in 773 F.3d Cir. 2014). brought against Sys 4. Ericsson suit D-Link tems, Inc., Inc., Inc., Acer, Netgear, aspects patents 5.The Acer technical of the are not Inc., Dell, Inc., Corp., Gateway, America opinion. Bel- relevant to this

1371 1329, (Fed. 2016) (“Wi- owner, al- F.3d Cir. son, previous had 1333 patents’ dispute Fi not that Achates infringement in district renders ready asserted priv- challenge were in against defendants that the Board’s timeliness rul court more than a Broadcom petitioner ing nonappealable good with if Achates is still ity filing petitions. law.”). year prior panel Because the concluded that Achates, implicitly did overrule Cuozzo discovery seeking a motion filed Wi-Fi challenges time-bar held Wi-Fi’s indemnity agreements, defense regarding unreviewable, and affirmed. at or email other payments, and agreements, One, 1340; also v. Broad see Wi-Fi between Broadcom and communications (Fed. Corp., com Cir. Fed.Appx. District defendants Eastern 2016) (summarily affirming the time-bar both litigation. The Board denied Texas patents). ’568 ’625 decisions subsequent motion motion and Wi-Fi’s this court rehearing. petitioned Wi-Fi petitioned rehearing en banc. Wi-Fi mandamus, denied. which we for writ consider granted We Wi-Fi’s Ericsson, Telefonaktiebolaget LM In re we should overrule Achates 2014). (Fed. Fed.Appx. 585 Cir. that the Director’s time-bar hold subject to chal- determinations IPR The Board instituted claims, question presented for en banc view. issued Final Written lenged rehearing is: challenged un- finding the claims Decisions Decisions,

patentable. the Final Written this court overrule Should Achates Ref- had not Inc., determined that the Board Wi-Fi Publishing, Apple Inc. v. erence privity (Fed. 2015) that Broadcom was shown Cir. аnd hold 803 F.3d District in the Eastern the defendants for a review is available therefore, IPR litigation, Texas challenge the PTO’s owner time-barred under petitions were satis- One, v. Corp. Broadcom Wi-Fi requirement fied the timeliness IPR2013-00601, LLC, No. WL 315(b) governing filing (P.T.A.B. 6, 2015); *4-5 Mar. petitions review? One, LLC, No. Corp. v. Broadcom Wi-Fi One, Corp., 851 LLC v. Broadcom Wi-Fi IPR2013-00602, 1263009, at *4 2015 WL 2017). 1241, 1241 F.3d (P.T.A.B. 6, 2015); Corp. Broadcom v. Mar. II. Discussion IPR2013-00636, One, LLC, No. Wi-Fi (P.T.A.B. 1263010, *4 Mar. WL action, As with “strong presumption” favoring apply the Final Deci appealed the Written Wi-Fi actions, administrative sions, things, that arguing, among other dec including the Director’s reverse vacate this court should 2140; also see isions.6 panel A time-bar determinations. Board’s Lamagno, de Martinez Gutierrez arguments, rejected of this court Wi-Fi’s 132 L.Ed.2d renders reasoning that Achates (1995) (“[F]ederal traditionally judges 375- rulings nonappealable. time-bar ‘strong One, from the Corp., proceed Broadcom See LLC v. Wi-Fi 6, jurisdiction over an this court with exclusive PTO are reviewed Final decisions according provided in the of "the Trial appeal to the standards from a decision ("APA”). Procedure Act Administrative zo, Cuoz United States Patent Appeal and Board 2142; Planet, LLC v. 136 S.Ct. at Unwired respect ... with to Trademark Office Inc,, 1376, Google 1379 Cir. 841 F.3d partes title 35.” inter review under 2016). 1295(a)(4)(A) provides And 28 U.S.C.

1372 ”); added). reading The natural judicial Bow the statute intends review.’ §of reach to Family Physicians, limits the the determi- v. Mich Acad. en 2133, to 667, 670, nation Director whether U.S. 106 90 476 (a) §in forth (1986); IPR as set Subsection States L.Ed.2d 623 United v. Pet.) only addressing Nourse, (9 8, 28-29, 314—the subsection 9 34 U.S. L.Ed. issues are part substantive that Accordingly, if a 31 “rea determination sec- sonably susceptible” interpretation Director’s “under this an to review, allowing judicial adopt tion”—reads: we must Holder, (a) v. an Kucana interpretation, Threshold.—The not Director 233, 827, 251, 175 558 U.S. 130 S.Ct. an inter to be authorize review n (2010); de 694 Gutierrez Mar L.Ed.2d unless Director deter- instituted tinez, 434, 515 at U.S. 115 S.Ct. 2227. the information present mines filed under section 311 and strong presumption, of this In view response any filed section 313 only when we will abdicate review a shows that there reasonable likeli- Congress provides a and convinc “clеar the petitioner prevail hood to ing” prohibit it intends indication respect to at least 1 of the claims 2140; Cuozzo, see 136 S.Ct. at review. Lin petition. challenged 768, v. Mgmt, dahl 470 U.S. of Pers. Office (a) things: it Subsection two 778, 1620, (1985); 105 S.Ct. 674 L.Ed.2d requirement in identifies threshold for . Bloch, 2450; 349-50, 104 S.Ct. 467 U.S. stitution, recognized, as Cuozzo Serv., Mail, v. Return Inc. U.S. Postal grants the not to insti discretion Director 1350, 1357(Fed. F.3d tute when met. 136 even the threshold is convincing find no clear We (“[T]he agency’s S.Ct. at 2140 to decision statutory' in the specific indication lan deny a matter committed AIA, legislative guage specific discretion.”). the Patent Office’s It does history AIA, statutory or the not other issue relevant address scheme whole that demonstrates Con as institution determination. The gress’s intent bar review of 314(a) threshold in terms defines the time-bar See determinations. focused determinations Cuozzo, parties 136 S.Ct. at 2140. The have patentability particular merits claims. cited, of, any nor specific are we aware only preliminary, This determination is legislative history clearly and convinc just reasonably likely at what is aimed congressional ingly indicates intent bar fully be patentability decided when ad §of time-bar deter dressed, an IPR See should be instituted. minations. review the We lan Cuozzo, referring 2140. In guage scheme in turn. the preliminary patentability determina ’ (cid:127)Starting statutory language, with the tion, Di the Court characterized the 314(d) provides regarding “[t]he rector’s as discretion by the which, Director whether to institute an “akin to decisions other being contexts, this section shall have held be unreviewable.” nonappealable.” (emphasis final Id. 884, Examples discretionary agency's include an S.Ct Inc., Ass’n, (2011); proceeding, to initiate a L.Ed.2d 703 Cheese Switz. S.Ct, grand jury's Market, Inc., determina- v. E. Home's id., cause, probable deni- court’s (1966); Function S.Ct Jordan, summary judgment, see al Ortiz contrast, 315(b) § Di- controls the determination is runs coun- unreviewable authority to IPR that is ter to as principle, rector’s institute the reflected in preliminary reading Director’s the to comport unrelated to favors statute the- with, from, the patentability depаrt approaches assessment or Director’s familiar not if not initiate IPR even the comparable discretion issues.8 pres- is threshold “reasonable likelihood” reading is consistent with the over 315(b) ent. Section reads: statutory all as scheme understood (b) An Owner’s Action. inter through the of Cuozzo’s lens directive may not be instituted in examine the scheme terms of petition requesting proceeding the the 314(a) “closely § what is related” to the after on year filed more than the date The determination. party in inter- petitioner, which the 314(d) “§ stated that bars Cuozzo est, or privy petitioner the is served patent “a merely review” both when holder infringement complaint alleging with a the challenged Patent Office’s ‘deter- patent. The the time limitation set presented min[ation] the'information forth in shall preceding sentence petition ... shows that there is a joinder apply request to a of success re reasonable likelihood’ ‘with (c). subsection spect to at least of the claims chal 314(a)” and, lenged,’ addition, § When The dissent states that “a “does grounds holder claim in a go petition.” to the merits Dis- closely related to that decision senting Op. at 1378. This correct. S.Ct. at -review.” to in

time-bar decision nowhere referred (alterations added). original) (emphasis in- 314(a). Additionally, the time bar is not claims, scheme particular whereas demonstrates focused AIA, 314(a)’s several is; sections such as the threshold determination procedural requirements preliminary stat time bar the time of involves service §§ closely ed relate more complaint alleging of a “of infringement determination Director. The patent.” Nothing up “rea sets sonable likelihood” determination under two-stage process addressing time 314(a) clearly whether “the time-bar about bar: unpatentable grounds claims fully finally at the institution decided stage. asserted.” at 2140. The state Court’s points ment thus holding strongly determination, therefore, The time-bar being unreviewability to the toward limited is not to either ‍‌‌‌‌‌‌‌‌​​​‌​​​‌​‌​‌​‌​‌‌‌‌​​‌‌​‌‌‌​​​‌​‌‌​‌​‌‌​‍the non-initiation or аkin closely determinations Director’s related merits preliminary-only determinations patentability preliminary determina unreviewability is common in which or the exercise discretion not law, latter case because institute. related final merits determination is re- complied supra See note has viewable. 7. Because Whether 314(a) determination, not mention this is not such a as distinct is- sue, position nothing patentability time-bar has to'do with PTO’s . Inc., Media, Google, broadening nonreviewability— scope 708 F.3d convincing certainly not a clear reason. Indeed, Court in the simi- stressed Cuozzo Although language uses somewhat precursors, larity of to its without precursor pro- from the different mentioning differences. 136 S.Ct. visions, is no infer a there reason to deliberate Thus, statutory not to scheme as a or discretion institute. whole

merits many “closely § contrasts with provision time-bar demonstrates that 315 is requirements preliminary procedural related” to the decision ad 314(a), §§ § to the in which relate in it is not statеd dressed therefore 314(d)’s ability pre- to make an informed subject § Director’s bar review. 2142; liminary patentability pur- Cuozzo, Accep at Credit S.Ct. cf. 314(a). 315(b) § Specifically, Servs., § Corp. suant tance v. Westlake F.3d 2017) fundamentally 1044, time-bar determinations (holding 1049-51 evaluating the satis- different from those nonappealability provision similar 312(a)(3)’srequirements, review, § is- post-grant faction of at respect 312(a)(3) 324(e), § sue Cuozzo. Section demands preclude does not our U.S.C. re challenged, particularity as to “each claim estoppel view of an determination under 35 325(e)(1)). grounds challenge § to each on which the Accordingly, our re based, sup- claim is and the evidence statutory language view of the and the ports challenge for the to each grounds statutory scheme reveals no clear and con is requirement claim.” That tied vincing Congress’s indication of intent to 315(b) of a “reason- § Director’s determination bar time-bar of at unpatentability able likelihood” determinations. claim. Thе time bar is

least one not. Enforcing statutory agen- limits cy’s authority precisely type to act is appeals also

The issue Wi-Fi issue that courts have historically re- statutory technicality.” is not “some minor See, e,g., City Arlington viewed. v. at 2140. The time bar is 136 S.Ct. F.C.C., 290, 307, 1863, 569 U.S. 133 S.Ct. preliminary merely procedural about (2013);Bowen, at if requirements they be corrected 671, 2133; facts, Kyne, Leedom v. fail to reflect real-world but about 184, 190, 180, that limit 3 L.Ed.2d 210 agency’s facts au real-world As a limit on the Di- thority act under the IPR scheme.9 The IPR, ability rector’s timely filing petition of a to institute under precedent time bar is such an issue. condition Director’s au We hold It thority to' act. sets limits on Di time-bar determinations institute, authority rector’s are reviewable this court. balancing public various interests. And like III. Conclusion whole, governs 315 as a the relation of actions, proceedings IPRs to other or in Cuozzo instruct- cluding actions taken in district court. “strong presumption” favoring ed that the 9, instance, 9898990, *4, (P.T.A.B. 31, par For the dissent “real WL conflates at *6 Dec. 312(a)(2) reason, ty interеst” as used For this the PTO has estab 315(b), 312(a)(2) part procedures rectify "§ claims noncompliance lished 312(a)(2). parcel inquiry Holdings, of the timeliness Lumentum Inc. Ca v. Photonics, Inc., IPR2015-00739, Dissenting Op. pella 315.” incor No. (P.T.A.B. example, identify For rect. if a fails to 2016 WL *3 Mar. 312(a)(2), 2016) 42.8(a)(3), parties (precedential); §§ all real in interest under 37 C.F.R. can, does, 42.8(b)(1). contrast, petition allow is not filed See, interest, party e.g., year er to add a real in interest. within a after a real Alacritech, Inc., Corp. privy Intel No. IPR2017- served with a com 315(b), Paper plaint, by § No. 2017 WL 6209219 isit time-barred and the (P.T.A.B. 30, 2017); Elekta, Nov. Inc. v. Varian and in no cannot rectified event Inc., IPR2015-01401, Sys., Medical No. can IPR be instituted. explained in As we “may be overcome Intellectual Ventures ’ ‘ indications, convincing” Co., “clear and JPMorgan II Chase & ‘specific language,’ ‘specific drawn from 2015), F.3d 1372 when assessing of in- history,’ ‘inferences legislative and jurisdiction whether we exercise over from scheme as a tent drawn an from appeal decisions re whole,’ intended to bar re- garding patents covered business method Finding no such view.” S.Ct. 2140. (“CBMs”), Congress consistently differen indications, convincing hold clear and we petitions between to institute tiated Director’s time-bar determina- in the act of institution the AIA. Id. at § not from exempt tions under are party seeking The former is what a review, con- and overrule Achates’s challenge proceed to a in a CBM today trary conclusion. We do decide ing, proceeding, post-grant a derivation a §§ disputes arising from 311— whether all proceeding, or an IPR files—and which final Our hold- nonappealable. sufficiency—and the PTO reviews the ing applies only appealability latter is what the is authorized to Director time-bar We re- determinations. do. Because the Director or her Id. panel in the first mand to consider delegees may proceeding, a “institute” time-bar instance merits Wi-Fi’s 315(b)’s on necessarily bar institution is appeal. PTO, to filing directed not those THE PAN- REMANDED TO MERITS petition to id. institute. See EL regulations support PTO’s own this O’MALLEY, Judge, concurring. Circuit 315(b); reading they clearly consider majority’s I agree with much possibility might Board mis- certainly agree I thoughtful reasoning, and take in of its takenly actions excess statu- its conclusion that time-bar determi- For tory jurisdiction. example, Part 42 of are not nations under 35 U.S.C. in Regula- Title the Code of Federal sepa- I exempt review. write “governs proceedings tions before the because, view, rately question my Appeal Trial Board.” 37 rehearing for en banc presented 42.1(a) (2016). addressing C.F.R. simpler majority’s than the case much proceedings, Part “Jurisdiction” these analysis implies; it turns on the distinction requires to expressly “[a] authority between the Director’s to exer- with the institute a trial be filed must reviewing adequa- cise discretion when period time consistent with re- Board cy to institute 42.3(b); see also quired by statute.” (“IPR”) authority to undertake (identifying proceedings id. as 42.2 If the such first instance. “trial”). A the definition of falling within and Trademark Of- United States Patent straightforward reading regula- of these (“PTO”) fice exceeds authori- believed, PTO tions indicates that the ty by instituting an IPR proсeeding under regula- those time it issued least at the contrary to the circumstances tions, statutory ju- that it not have 315(b), court, sitting proper our pro- to institute authority risdiction court, appellate role as an should review to response ceedings—including IPRs—in Indeed, those determinations. should the time to filed outside petitions give address those decisions in order to filings, limit set stat- congressionally imposed effect to the peti- of those gardless adequacy utory authority limitations the PTO’s institute IPRs. tions. 314(d)’s appellate agency. bar review ees made federal

Section According the Director’s assessment ma directed adequacy timely jority substantive filed Lindahl involved the con 315(b)’s time petition. (1) bar has Because of a statute ah directed struction nothing to adequa- do with the- substantive questions of to “determine liabili directed, instead, cy (2) “final,” ty;” made those determinations act, §= authority “conclusive,” review;” the Director’s subject and “not apply (3) decisions courts from revisiting barred рrovision. underpinnings disability “factual '... de 136 (quoting terminations.” S.Ct. at 2141 consistent conclusion Lindahl, 771, 791, 470 at 105 U.S. S:Ct. with, but, view, in my by dictated 1620). observed, however, The Court that reasoning in Cuozzo Court’s — permitted the same statute to con courts Lee, Speed Technologies, LLC v. U.S. alleging, example, sider that the claims -, 136 S.Ct. 196 L.Ed.2d 423 agency “substantially] departed] from im (2016).There, Cqurt considered wheth procedural rights.” (quoting Id. portant er bars review determinations Lindahl, 105 S.Ct. the PTO that by IPR com .for plies, implicitly, “particu least with the majority The Cuozzo characterized Lin- forth larity” requirement dahl’s, set in interpretation of particular its stat- 312(a)(3). 136 at 2138-39. The ma S.Ct. “presenting] agency’s ute as primacy jority correctly here notes that the Court statutory over core in function accord “recognize[d] ‘strong in pre Cuozzo intent,” Congress’ with and declared that in sumption’ favor that review “interpretation Appeal’ pro- the ‘No statutes, interpret in apply when we vision has the [in ALA] same effect.” may limit or preclude statutes that cluding Congress, enacting Id. This is because in (quoting 2140 Mach Min review.” ALA, recognized that the “core statu- — E.E.O.C., U.S. -, ing, LLC v. 135 tory function” the PTO is pat- to make 1645, 1650-51, 191 L.Ed.2d 607 determinations, entability to in- and chose (2015) (internal omitted)). quotation marks preliminary sulate review observed, however, that The Court this determinations the PTO as to whether presumption be overcome “clear could petitions IPR ] that there is a rea- “show[ indications, convincing” drawn from sonable likelihood language,” “specific legislative “specific prevail respect with to at 1 of least history,” “inferences of intent drawn challenged in petition.” 35 claims whole,” statutory from the scheme as a 314(a); see 136 S.Ct. at «Congress intended to bar review. Id. (“The provi- text the ‘No Appeal’ Inst., (quoting Cmty. Block v. Nutrition sion, along in place with its the overall 340, 349-50, 104 S.Ct. U.S. scheme, alongside its role (1984)). L.Ed.2d 270 Act, prior Administrative Procedure statutes, interpretation of similar deciding that the in fa Congress’ IPR, purpose crafting. all vor of overcome case, point precluding analyzed distinguished favor (emphаsis decisions.” Management,[PTO]’s Lindahl Personnel Office of added)). reason, For Court found 4 Lindahl involved Cuozzo’s claim question of whether can pleaded particularity’ courts review dis “was not “with un- ability employ federal little more than determinations der a chai- [wa]s [PTOj’s conclusion, lenge to the whether a than “filed more 314(a), presented §. the ‘information year petitioner, after the date which the Id. at petition’ interest, warranted review.” privy peti (citation omitted). a complaint 'alleging tioner is served infringement patent.” of -the 35 U.S.C. 315(b)’s squarely falls-

Section time bar appealability on the other side of Cuozzo’s

ledger, “closely for it is not tied establishing well versed interpretation of statutes application and Congressional time bars. discre- [PTOj’s decision to initiate related application control the should 315(b) does not Id. at-2141. Section [IPR].” bars, that of time contemplate that the PTO render deci ‍‌‌‌‌‌‌‌‌​​​‌​​​‌​‌​‌​‌​‌‌‌‌​​‌‌​‌‌‌​​​‌​‌‌​‌​‌‌​‍say I PTO. not see the need more. do patentability—it simply sion related' authоrity limit on places a the PTO’s HUGHES, Judge, joined by' Circuit compari that is based on a IPRs LOURIE, BRYSON, DYK, Circuit so son of two or more And dates. dissenting. Judges, unambiguous phrase “[a]n [IPR] with the Congress of judicial review barred ” may not be .... 35 U.S.C. instituted if (PTO) Di Patent and Office Trademark 315(b) added). (emphasis § In contrast partes rector’s to institute inter determination, 314(a) § with the Director’s (IPR) 314(d). § review 35 U.S.C. application preliminary which involves the however, majority opinion, pro limits this no patentability of such decision principles, hibition to the of Director’s assessment § contemplated is See N.L.R.B. instituting criteria set forth review — Gen., Inc., U.S.-, v. 137 S.Ct. SW § Accordingly, 314. court finds that (describ 929, (2017) 263 L.Ed.2d 314(d) § apply prelimi not to does other ing “speaks ‘may that to not’ a clause who determinations, nary such as whether acting be an as an imperative). officer” timely agree not filed. I do 315(b) § one way, Put another codifies statute, reading of the with narrow procedural rights” “important of the not which contradicts Congress to owners chose afford to the language, contrary but is also Su Lindаhl, IPR context. U.S. at Court’s of that lan preme construction of Allowing judicial review S.Ct. Technologies, guage Speed in Cuozzo by the erroneous as determinations PTO — Lee, U.S. -, 136 S.Ct. § applies to whether the time bar (2016). “act[ingj prevent agency from Cuozzo, Supreme Court held that limits,” of one outside 314(d) § of judicial prohibited. review of categories “shenanigans” envisioned Cuozzo, “questions ap- to the 2141- are tied majority closely 136 S.Ct. at plication statutes re- interpretation Patent Office’s decision lated A PTO whether an by the détermination review,” including initiate § is time-barred questions compliance- with U.S.C. entirely agency’s “core unrelated '312(a)(3)’s § petition requirements. determining statutory function” of 315(b), S.Ct. at 2141. 35 U.S.C. which or patentable. claims are are not may be “institut- 791, 105 describes when an IPR Lindahl, (quoting ed,” closely even more related institu- merits Unlike the threshold 312(a)(3)—which 314(a), §. no decisions than inquiry tech subsumed within my use- “institute.” In expertise required nical calculate the word view, interpretation is not Cuozzo confirms Cuozzo confirms this petition, 314(d). There, to the merits of the but limited found judicial closely also bars related convincing clear and indications over- petition’s issues such as the timeliness. in favor of came the majority opinion Because the is inconsis- respect to IPR reviewability with institu- plain meaning tent and the with Cuozzo tion decisions. 136 S.Ct. at 2140. 314(d), I respectfully dissent. conclusion, To reach this the Court looked plain language statute, I stressed that whether the “Patent Office inquiry Our and end should start unlawfully initiated review is APA the words of the statute. The ex appealable” because “that is what empts agency actions from says.” (emphasis Id. at 2139. add- preclude judi “to the extent that statutes ed). any Cuozzo also foreclosed notion that cial review.” 5 is a 701. There 314(d) only applies question “strong presumption Congress in whether the raises a reasonable tends ac review administrative invalidity. likelihood of See id. at 2141. contrary tion” intent must be Instead, prohibits judicial the statute convincing. clear Bowen v. Mich. “questions view tied Family Physicians, Acad. application interpretation of stat- 90 L.Ed.2d 623 utes related to the Patent Office’s decision course, presumption, is not to initiate inter review.” Id. spe insurmountable. can enact petition’s timeliness review, cific legisla statutes to bar decision, part Board’s history might Congress’s tive manifest in and therefore barred re- to tent do so. Id. S.Ct. 2133. view. Section states inter “[a]n prohibi in express Even the absence of an partes not may review instituted the tion, the overall might structure petition requesting proceeding the is filed Congress sought prohibit to indicate 1 year more than after the on date which judicial review. See States v. Faus United interest, petitioner, the to, 439, 447-48, 108 S.Ct. of privy petitioner is the with a served (1988); L.Ed.2d Cmty. Block v. Nutri complaint alleging infringement pat- of the Inst., 340, 352, U.S. (1984). question ent.” The not timeliness does L.Ed.2d 270 go to petition, the merits the nor it Congress’s to prohibit judicial intent re part become final the PTO’s determina- view the Board’s institution deci Instead, tion. the PTO evaluates timeliness sion is clear and unmistakable. Section prelimi- within context the PTO’s 314(d) states determination “[t]he nary determination whether institute Director whether to institute an inter IPR at Accordingly, all. timeliness under partes review this section shall be plainly question “closely tied” final nonappealable.” (emphasis and add to the Director’s In- decision institute. ed.) The statute a specific agency calls out deed, it specific requirement is a for “insti- determination, expressly prohibits and Moreover, although tution.” Alito Justice reviewing courts from that decision. “Ab disagreed result in ultimate Cuoz- persuasive sent to the contrary, indications zo, recognized petition’s even he that “the presume Congress says what it means timeliness, particularity no less than the says.” and means it what Simmons v. — Himmelreich, -, allegations, ‘closely appli- U.S. 136 S.Ct. tied 1843, 1848, 195 (2016). interpretation cation relat- statutes the initial decision initiate review decision to the Patent Office’s ed review,’ says Court such ... agency’s the context Id. at 2155 are unreviewable.” questions cаnnot accept final decision. We this in- (Alito, J., dissenting concurring part terpretation. It into provision reads (alteration original). part) (to decisions) interlocutory limitation court, however, scope confines the that the nowhere mentions and review bar in that is unnecessary. The Administrative Director wheth- “the Act already Procedure limits review to 314,” §in IPR as set forth er to institute final decisions. Patent Of- which reasonable likelihood establishes fice’s decision to inter initiate instituting Maj. Op. review. standard “preliminary,” view is not “final.” And again, held already But Cuozzo 1371-72. agency’s deny decision to to the Di- limited is a matter committed to the Patent reasonable likelihood determina- rector’s So, Office’sdiscretion. read as limited to Court Supreme tion. at 2141. The 136 S.Ct. preliminary discretionary deci- rejected the notion that the sions, provision Appeal” the “No permits courts to review superfluous. seem “any bearing the Patent Office’s issue (citations omitted). Id. to institute inter preliminary decision majority appeal concludes Rather, Supreme Id. partes review.” apply Di- bar does “limits explained “Congress has told institute,” statutory authority to rector’s determine whether Office proceed, Maj Op. But this position review should ‘final’ agency’s has Cuozzo, made clearly rejected in 136 S.Ct. at 314(d). Our conclusion ‘nonappealable.’ setting 2139-40. Even aside may not revisit this initial de- that courts this rejected type Court also to this gives termination effect Bell, statutory interpretation in Briscoe v. command.” 53 L.Ed.2d sidestep binding precedent, To

majority states that is appealable Act, Voting Rights Briscoe involved “the time-bar determination because Attorney General to de- which allowed the finally at the fully institu- be decided ap- preconditions whether “the termine Maj. the stage.” Op. tion And jurisdic- to plication particular of Act 314(d) majority suggests that is limited 407, met.” Id. at S.Ct. 2428. tions are 97 preliminary-only or mer- to “non-initiation provided that determina- “[a] The statute for which its determinations unreviewabili- Attorney of Genеr- certification in the Id. But ty is common law.” of of Census under al or the Director 314(d) only to that are applies issues ... shall reviewable this section decision, into the final written incorporated 408, Id. at 97 S.Ct. 2428. any court ....” essentially a appeal bar becomes then that ... explained “[i]t Circuit is The D.C. appeal. on The prohibition interlocutory of that where the intent apparent even expressly rejected this in- Supreme Court review, judicial a to Congress preclude at 2140. terpretation to jurisdiction in the court exists limited explained: As the Court are on their face actions which review dissent, panel The like the dissent authority.” of plainly excess Appeals, scope limit the Court would Levi, 1259, Briscoe v. 535 F.2d (quoting interloc- Appeal” provision of the “No to (D.C. 1976)). The D.C. Circuit 1265 utory leaving court free to appeals, a § 314.-Indeed, this that statute barred criteria under Cuozzo fore- further concluded judicial issues reading review substantive like this by holding closed that-the bar the Di computations “thе actual made by on judicial extends to review the Director’s Census,” rector but not “whether requirements assessment ap Director ‘consistent acted with the plainly which is a different statuto- meaning of the Id. at parent statute.’” ry section than 314. 136 at 2141. S.Ct. Briscoe, (quoting S.Ct. Supreme .at re F.2d Court II “[ejection- 4(b) versed, and found that 314(d) language §of plain should Voting Rights prohib Act hardly could lead to Congress us conclude that intended explicit it terms.” in more review preclude judicial review whether IPR Id, 2428. The Court S.Ct. petitions timely To filed. the extent the language that stressed is absolute “[t]he unclear’, history statute of the AIA appear on of no face admit its and would 314(d) dispels any judi- doubt bars exceptions.” Id. cial review of issues like timeliness 314(d) similarly prohibits Section review of real identity parties interest. of “the 314(d) The difference between- -inter bar review reexaminations Briscoe, Like view.” the statute in Congress confirms intended broad language no provides ex- absolute ly prohibit institution deci Nevertheless, ceptions. majority con- change sions. in phraseology” in the -“[A] timely filing cludes a petition “[t]he statute a of change “creates precedent condition Burke, in intent.” v. Crawford authority Maj. Director’s to act.” Op. 176, 190, S.Ct. L.Ed. 147 added), (emphasis at Í374 Like the D.C. unlikely that Congress And Briscoe, majority Circuit in attempts statutory provision using enact a different distinguish “a decision of the between language thereby intending “without jurisdiction” Board made within Id.; change meaning.” see also Merrill “an order Board made excess of Pierce, Lynch, Fenner & Smith Inc. Briscoe, delegated powers.” 535 F.2d at — -, Manning, 1264. The rejected this (2016) (Thomas, J.; reasoning, and we should too. (“[W]hen concurring) Congress enacts a Ñor the phrase does “under section” uses different §in limit the bar statute, normally prior presume of requirements for subset insti- to convey did so a' different tution. This majority opinion court’s finds meaning.”). not bar review timeli- AIA, third-parties Even before could phrase ness- the because this sec- “under patent seek administrative cancellation § tion” rеach of “limits the through reexamination. When the PTO re- by determination the Director whether to reexamination, request a the § ceives IPR as set Maj. 314.” forth Director, added). must Op¡ determine whether the re- (emphasis at But to be clear, quest question raises new the substantial of phrase this section” “under sim- 303(c) § ply patentability. 35 U.S.C. partes pro- refers to the fact And inter that, § review is vides “[a] instituted under 314. The determination Di- phrase does not limit ... no the bar on rector substantial question new review the patentability Director’s assessment of has been raised will be 315(b), § nonappealable.”1 Accordingly, final and Under the Director in- cannot stitute petition bars review the specifically statute review the if was filed more year petitioner than one after request narrow issue of whether the raises or its party real in interest was served with a question patentabili- a “substantial new complaint alleging infringement. peti- And ty.” Id. The does not bar review identify tioners have the onus to all real the entire decision to initiate reexamina- 312(a)(2), § parties in interest under which tion. states, that petition “may be considered contrast, stark mark- used if ... identifies all real edly different inter parties in petition- interest.” on the Based post-grant proceedings. review and disclosure, er’s can Director assess barring Instead review the Director’s any petitioner’s parties real issue, § specific determination of a in interest with a complaint was served 324(e) § broadly and 35 prohibit more than year petition. one before review of the Director’s “determination Thus, 312(a)(2) § part parcel ... whether to institute” review. Accord- § inquiry timeliness under ingly, identify specific these ac- statutes majority distinguish tries to be- Director, not tied to resolu- real party inquiry tween the in interest specific tion of a issue as substantial 312(a)(2) § under Specifical- question patentability. linguis- new Such ly, majority notes that “if a tic particularly significant are differences identify fails to all parties real in interest 303(c), the AIA because retained with its 312(а)(2), can, under language, different respect reex- does, allow the to add a real aminations. party Maj. Op. interest.” at 1374 n.ll. contrast, By a petition that is time-barred Ill § 315 under cannot be rectified. majority’s ap- Even we followed the why To illustrate distinction is proach parse tried to out which re- flawed, patent suppose owner ar- quirements for from barred gues third-party, unidentified who

judicial review still makes infringement, has not been sued for is a §§ no distinguish sense to 311— in interest petition. assumption 314. The 315 is less disagrees patent Director with the owner §to the institution related than disputes and institutes review. No one '§§ Maj. Op. criteria see the Director’s on real party 1373-74, is For simply example, incorrect. interest unreviewable this scenario. 312(a)(1) 312(a)(2) relate suppose Now the Director makes the exact payment of fees identification of real determination, respect same but with interest, parties majority which the third-party who was sued more than one issues, agrees apрealed. cannot be These year before the was filed. Even however, bear the same relation to the though Director is making the same inquiry institution decision as the inquiry, factual his now be- § 315. implicates comes reviewable because it similarly question patentability true under old new af- substantial 312(c) (2006), governing U.S.C. reexamination, fecting concerned is claim appeal which of ‘‘[a] barred 312(a) request.” raised pursuant determination (2006). (a),” ‍‌‌‌‌‌‌‌‌​​​‌​​​‌​‌​‌​‌​‌‌‌‌​​‌‌​‌‌‌​​​‌​‌‌​‌​‌‌​‍i.e., subsection "a determination that illogical. agency’s The same final decision could

time-bar. result be unwound statutory technicality or some minor does not become more less under inquiry preliminary decision insti- “closely determi- related related” to tute inter review.” the results of that simply nation because 2139-40. consequences. inquiry have different Vacating invalidity the Board’s appeal why The facts of this underscore questions on the basis of threshold like is as related timeliness under parties timeliness real interest will require- to the institution decision as the squander spent the time and resources One ments under 312. Wi-Fi adjudicating the actual merits of peti- contend that Broadcom itself was served purpose tion. This is counter to the AIA’s year complaint more than one be- quick and cost effective “providing alter- Rather, petition. fore its One asserts Wi-Fi litigation.” Rep. natives to H.R. No. 112- in a 2010 Texas various defendants pt. Congress recognized at 48 parties in lawsuit were unidentified real issue, prohibited so it this court from petition. interest to Broadcom’s On re- reviewing the Board’s institution decision. mand, panel must determine whether prerogative second-guess It is not our Board properly parties resolved which decision, policy rely nor we should constitute interest statutory interpretations to tenuous under- 312(a)(2). recognizes One Even Wi-Fi mine it. this inquiry highly dependent, fact sought broad-ranging discovery as it into IV agreements, payments, commu- and e-mail jurisdiction Because do have proceedings nications in the below. But the Board’s giving the Board wide discretion on such filed, I timely Broadcom’s preliminary determinations is what enables spectfully dissent. IPRs to function as an efficient method of resolving validity issues. “giv[en] signifi-

not have Office power

cant to revisit and revise earlier

patent grants ... thought it had that the

Case Details

Case Name: Wi-Fi One, LLC v. Broadcom Corporation

Court Name: Court of Appeals for the Federal Circuit

Date Published: Jan 8, 2018

Citation: 878 F.3d 1364

Docket Number: 2015-1944; 2015-1945; 2015-1946

Court Abbreviation: Fed. Cir.