Patent Validity Attack Timeliness Ruling Can be Appealed

Jan. 8, 2018, 6:07 PM

A patent office decision that Broadcom Corp. didn’t wait too long to file an administrative patent validity challenge can be appealed, the full U.S. Court of Appeals for the Federal Circuit ruled.

The court overturned a 2015 decision by a three-judge panel that patent holder Wi-Fi One LLC couldn’t appeal a Patent Trial and Appeal Board decision that challenger Broadcom had met a timeliness requirement for filing its inter partes review patent validity challenge.

The Jan. 8 decision opens a narrow avenue for appeals of PTAB decisions on whether to accept such challenges, when the timeliness of the petitions is at issue.

The Federal Circuit court majority in the 9-4 decision also overturned a 2015 decision in Achates Reference Publishing Inc. v. Apple Inc. that PTAB rulings on the time-bar questions were final and can’t be appealed. Under Section 315 (b) of the America Invents Act (AIA) of 2011, alleged infringers have one year after litigation in federal court begins to file a challenge at the PTAB.

Broadcom filed an IPR petition in 2013 against Wi-Fi One’s patents, acquired from Swedish telecommunications and network service company Ericsson Inc. Wi-Fi One argued that Broadcom waited too long to file the IPR petition after a 2010 patent infringement lawsuit involving the three patents, even though Broadcom wasn’t a defendant. Wi-Fi One had argued that Broadcom was related to defendants in its lawsuit through business and legal obligations.

The time-bar limitation is unrelated to Section 314 of the AIA that says the PTO director’s determination on whether to initiate an inter partes review is final and can’t be appealed, the Federal Circuit court majority held.

“We find no clear and convincing indication in the specific statutory language in the AIA, the specific legislative history of the AIA, or the statutory scheme as a whole that demonstrates Congress’s intent to bar judicial review of § 315(b) time-bar determinations,” Federal Circuit court judge Jimmie V. Reyna said in the majority opinion.

The case has been remanded to the original federal circuit panel to review the PTAB’s decision on the timing of Broadcom’s petition.

VirnetX Inc.'s appeal of a PTAB decision in a dispute with Apple Inc. was on hold pending the decision in the Wi-Fi One case. VirnetX argues that the petition from hedge fund Mangrove Patners Masterfund Ltd. should be time-barred because Mangrove was associated with RPX Corp. a proxy for Apple in the dispute.

Statutory Interpretation in Cuozzo

The Federal Circuit court majority said they relied on the Supreme Court’s guidance in its 2016 ruling in Cuozzo Speed Techs. LLC v. Lee. that said Congress’ language and legislative history could inform whether or not IPR rulings could be subject to judicial review. The high court in Cuozzo had left the door open to potentially allow appeals in decisions to initiate IPRs under certain circumstances, it said.

Judge Todd M. Hughes, however, in a dissenting opinion with three other Judges, said that “Congress’s intent to prohibit judicial review of the Board’s IPR institution decision is clear and unmistakable.” The dissenting judges disagree with the majority’s “narrow reading” of the AIA that contradicts the statute and the high court’s construction of statutory language in Cuozzo, Hughes wrote.

Wi-Fi One LLC was represented by McKool Smith P.C. Broadcom was represented by Wilmer Cutler Pickering Hale and Dorr LLP.

The case is Wi-2 Fi One, LLC v. Broadcom Corp., Fed. Cir., 2015-1944, 1/8/18.

To contact the reporter on this story: Malathi Nayak in Washington at mnayak@bloomberglaw.com

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bloomberglaw.com

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