Time-Bar Determinations of Inter Partes Reviews are Appealable per Federal Circuit

On January 8th 2018, the Federal Circuit held in Wi-Fi One LLC v. Broadcom Corp. that a determination regarding whether an inter partes review was or was not time-barred is an appealable determination. This en banc decision of the Federal Circuit reversed prior precedent on the issue.

Timeliness is one of the toughest hurdles to overcome in many types of litigation, including appeals. This was especially true in the Federal Circuit regarding Patent Trial and Appeal Boarddeterminations involving the America Invents Act (AIA), a section of which indicates that the Director’s determination of whether to institute inter partes review “shall be final and non-appealable.” Previously, the Federal Circuit held in Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) determinations of timeliness under section 315(b) of the AIA based on language of section 314(d) of that statute.

However, in Wi-Fi One LLC, the en banc court relied upon “the strong presumption in favor of judicial review of agency actions” and absence of clear and convincing legislative intent to prohibit judicial review in these circumstances to reverse the panel decision. In finding that the non-appealability of 314(d) was not applicable to 315(b), the en banc court opened the door to appeals that were previously prohibited.

The court’s decision is limited in that it does not revoke the element of timeliness from inter partes reviews, but instead creates an opportunity to question the determination of the Director as to whether or not a particular matter is timely. This will likely create more litigation surrounding inter partes reviews.