Editor
The BPLA Files Amicus Curiae Brief in Wi-Fi One, LLC v. Broadcom Corp.
Is the Patent Trial and Appeal Board’s determination on the timeliness of a petition for inter partes review appealable? Until now, the answer has been “no.” But the Federal Circuit is now set to reconsider that question en banc. The BPLA recently filed an amicus brief, in Wi-Fi One, LLC v. Broadcom Corp., urging the Federal Circuit to hold that a determination by the Patent Trial and Appeal Board that an inter partes review was not time-barred under 35 U.S.C. § 315(b) is appealable if the Board addresses the issue in its final written decision. In Achates Reference Publishing, Inc. v. Apple Inc., the Federal Circuit held that 35 U.S.C. § 314(a) insulated any timeliness determination from appeal. In Wi-Fi One, the Federal Circuit applied the Achates holding to deny review of the Board’s determination that the petitioner, Broadcom, was not time barred from requesting inter partes review of Wi-Fi’s patent. Thereafter, in Cuozzo Speed Techs., LLC v. Lee, the Supreme Court provided some guidance on the scope of review available for decisions in an inter partes review. In January 2017, the Federal Circuit vacated its decisions in Wi-Fi One, and granted Wi-Fi’s petition for rehearing en banc. The Federal Circuit invited briefing as to whether it should overrule Achates and hold that judicial review is available for a patent owner to challenge the Board’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b). In its brief, the BPLA argued that the Board’s power to institute an inter partes review under § 314(a) is particular to the “petitioner.” There must be a showing that “there is a reasonable likelihood that the petitioner would prevail” on at least one of the challenged claims. Under § 315(b), the Board may not institute review if the “petitioner” (or its privy or real party in interest) filed its petition more than one year after being served with a complaint for infringement of the challenged patent. A time-barred petitioner has no cause of action. Unlike the institution decision, the Board’s final written decision under § 318(a) is a decision on the merits of the cause of action. Although § 314(d) prohibits review of the Board’s institution decision, § 319 permits review of § 318(a) final written decisions. Thus, to the extent that a final written decision addresses the time-bar issue (or other issues related to whether the petitioner has a cause of action), then that issue should be reviewable.
homefacebookgpluslinkedInmail
PDFmail
NEWSLETTER ARCHIVE
Volume 48, Issue 2
BPLA-logo
img_14-N---Freeman_K_weberik
TOC
Index
Community Calendar Read more >
Table of Contents
Message from the President Monica Grewal
Read more >
Report of the Giles Rich Moot Court Competition
Read more >
< Back
The BPLA Files Amicus Curiae Brief in Wi-Fi One, LLC v. Broadcom Corp.
Read more >
Announcement of 7th Annual Invented Here! Program
Read more >
TTAB Proceedings Hosted by BPLA and Suffolk University Law School
Read more >
Annual Judges Dinner
Read more >
BPLA’S 2017 Annual Writing Competition Is Now Accepting Entries
Read more >
IP Due Diligence: The Five Questions You Must Ask in Corporate Transactions
Read more >
BPLA Committee Report
Read more >
Undiscovered “discovery”: Measures available in European civil law systems to obtain evidence in possession of the counterpart
Read more >
Report from the NYIPLA Section 101 Forum 2017
Read more >
Limitations on Enforceability of Patent Rights
Read more >
calendarcalendar__2_
PTAB Proceedings Hosted by BPLA and Suffolk University Law School
Read more >
BPLA International and Foreign Practice Committee Hosts Event on Strategies for Prosecuting Biotech and Life Science Patents in China
Read more >
2 Ways Courts Approach Willful Infringement After Halo
Read more >
4 Factors Influencing Enhanced Damages After Halo
Read more >
Trademarks and Bankruptcy – The Difficult Mission to Harmonize Continues
Read more >
Message from the Editor-in-Chief
Read more >
Members on the Move
Read more >
TOC