Wi-Fi One v. Broadcom: Strong Presumption of Judicial Review Prevails

The Federal Circuit started the new year with a 9-4 en banc decision holding that PTAB decisions on the timeliness of inter partes review petitions are appealable. This decision not only impacts future PTAB trial proceedings, but also overrules previous decisions that denied such appeals.

This is the first time the Federal Circuit has addressed the reviewability of PTAB decisions since the Supreme Court decided Cuozzo Speed Technologies in 2016, upholding 35 U.S.C. § 314(d) – the AIA provision barring challenges to PTO decisions to institute inter partes reviews.

The Federal Circuit, as well as the Supreme Court in Cuozzo, acknowledged that there is a “strong presumption” in favor of judicial review for government agencies. The standard for overcoming this presumption is proving a clear and convincing congressional intent to prohibit such review. It is this standard that draws a difference between Cuozzo and Wi-Fi: the Federal Circuit did not find
clear and convincing evidence that Congress intended to prohibit review of time-bars.

The statute at issue in Cuozzo, 35 U.S.C. § 314(d), reads: “The determination by the Director whether to institute an IPR under this section shall be final and nonappealable.” The Court, finding the text clear and expressive, determined that the text itself was an adequate showing of congressional intent to permit review. However, the Federal Circuit found no such evidence in the language or legislative history to demonstrate that Congress intended to bar judicial review of 35 U.S.C. § 315(b) time-bar determinations.

The Federal Circuit further reasoned that the time bar is not merely a factor for consideration in initiating a review, but rather a condition that effectively limits the PTO’s ability to act. Based on this logic, the Federal Circuit determined that the time bar is not actually part of the decision to institute an IPR and is, therefore, not subject to the bar on judicial review. This decision, therefore, essentially narrows the nonappealability holding of Cuozzo to determinations on the preliminary patentability of claims or the discretionary exercise not to institute an IPR – the substantive factors of the Section 314 threshold to institute an IPR.

Though the Federal Circuit holding applied only to the appealability of the time-bar determinations, some have reasoned that this decision opens the door for a number of issues to now be subject to appeal. More specifically, appealable issues might involve those that do not closely relate to patentability merits or to a decision not to institute an IPR. While it is uncertain what other procedural, or even nonprocedural, aspects will also be subject to appeal following Wi-Fi, the Federal Circuit has given the green light for attorneys to test the limits with future challenges to PTAB decisions.

© 2018 Buche & Associates, P.C. Article written by Nicole Sumida, J.D. candidate and student at the University of San Diego School of Law.