Tag Archives: 315(b)

Federal Circuit Reverses Course, Allows Appeal of Time-Bar Determination

This blog post was co-authored by Nicole Candelori and Justus Getty

In a break from previous cases on the issue, the Federal Circuit in January issued an en banc decision holding that time-bar determinations in inter partes review (IPR) proceedings are appealable. Wi-Fi One, LLC vs. Broadcom Corporation Nos. 2015-1944, 2015-1945, 2015-1946, 2018 U.S. App. LEXIS 387 (Fed. Cir. Jan. 8, 2018). As a result, decisions of the Patent Trial and Appeal Board (“Board”) finding claims of several Wi-Fi One, LLC (“Wi-Fi One”) patents to be unpatentable were remanded to the Board for consideration of whether the petitioner, Broadcom Corporation (“Broadcom”), was time-barred from bringing the petitions.

Under 35 U.S.C. § 315(b), an IPR may not be instituted if a petition is filed more than one year after the petitioner, real party in interest, or privy of the petitioner is served with a complaint for patent infringement.  In a 2015 decision, the Federal Circuit had held that a determination by the Board that a petitioner was time-barred was non-appealable. Achates Reference Publishing, Inc. v. Apple Inc., Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015). In that case, the Federal Circuit based its decision on the language of 35 U.S.C. § 314(d), which states that the Director’s determination “whether to institute an inter partes review under this section shall be final and nonappealable.”  Continue reading Federal Circuit Reverses Course, Allows Appeal of Time-Bar Determination

PTAB’s Two Precedential Opinions and Impact of Previous Proceeding on AIA Reviews

The Patent Trial and Appeal Board (PTAB) recently designated two opinions as precedential, which are two of the only three precedential opinions in America Invents Act (AIA) reviews up to today. The precedential status means that these opinions are binding precedents that the PTAB judges must follow in the future.

The first opinion, LG Electronics Inc. v. Mondis Tech Ltd. (IPR2015-00937, Sept. 17, 2015), is related to the one-year bar date for filing an inter partes review (IPR). Based on 35 U.S.C §315(b), an IPR is barred if it is filed more than one year after a petitioner is “served with a complaint alleging infringement of the patent” (emphasis added). The question is which complaint should be the basis for the one year deadline if several complaints are served. Continue reading PTAB’s Two Precedential Opinions and Impact of Previous Proceeding on AIA Reviews

Lack of Precedent at PTAB Can Lead to Conflicting Panel Decisions

A recent decision at the PTAB highlights one of the difficulties faced by parties and practitioners before the Board: the potential for conflicting decisions in a forum where almost nothing is considered precedential.

Earlier this month an expanded panel re-visited the question of whether a Petitioner may join its own previously-instituted Petition for Inter Partes Review. Consistent with earlier decisions, this expanded panel concluded that so-called “issue joinder” (the same party joining new issues to an instituted petition) is permissible under 35 U.S.C. § 315(c). Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corp., IPR2015-00762 (PTAB October 5, 2015) (Paper 16). Continue reading Lack of Precedent at PTAB Can Lead to Conflicting Panel Decisions