Wi-Fi One, LLC v. Broadcom Corp.

878 F.3d 1364

WI-FI ONE, LLC, Appellant

v.BROADCOM CORPORATION, Appellee

Joseph Matal, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director, U.S. Patent and Trademark Office, Intervenor

Wi-Fi One, LLC Appellant

v.Broadcom Corporation, Appellee

Joseph Matal, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director, U.S. Patent and Trademark Office, Intervenor

Wi-Fi One, LLC Appellant

v.Broadcom Corporation, Appellee

Joseph Matal, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director, U.S. Patent and Trademark Office, Intervenor

2015-1944

2015-1945

2015-1946

United States Court of Appeals, Federal Circuit.

Decided: January 8, 2018

Douglas Aaron Cawley, McKool Smith, PC, Dallas, TX, argued for appellant. Also represented by Donald Puckett, Nelson Bumgardner PC, Fort Worth, TX; Peter J. Ayers, Law Office of Peter J. Ayers, Austin, TX.

Dominic E. Massa, Wilmer Cutler Pickering Hale and Dorr LLP, Boston, MA, argued for appellee. Also represented by Kevin Goldman, Janine Marie Lopez, Zachary Piccolomini, Katie Saxton.

Mark R. Freeman, Appellate Staff, Civil Division, United States Department of Justice, Washington, DC, argued for intervenor. Also represented by Joyce R. Branda, Melissa N. Patterson, Nicolas Riley; Nathan K. Kelley, Kakoli Caprihan, Benjamin T. Hickman, Thomas W. Krause, Frances Lynch, Scott Weidenfeller, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA.

Jeremy Cooper Doerre, Tillman Wright PLLC, Charlotte, NC, as amicus curiae.

Eugene M. Gelernter, Patterson Belknap Webb & Tyler LLP, New York, NY, for amicus curiae New York Intellectual Property Law Association. Also represented by Irena Royzman, Jason Vitullo ; Walter E. Hanley, Jr., Ksenia Takhistova, Andrews Kurth Kenyon LLP, New York, NY; Robert M. Isackson, Venable LLP, New York, NY; Robert J. Rando, The Rando Law Firm P.C., Syosset, NY.

Doreen Yatko Trujillo, Saul Ewing LLP, Wayne, PA, for amicus curiae Federal Circuit Bar Association. Also represented by Richard Alan Neifeld, Neifeld IP Law, PC, Alexandria, VA.

Kia Lynn Freeman, McCarter & English, LLP, Boston, MA, for amicus curiae Boston Patent Law Association. Also represented by Erik Paul Belt.

Saurabh Vishnubhakat, Texas A&M University School of Law, Fort Worth, TX, for amici curiae Ann Bartow, Michael Risch, Gregory Dolin, Ted M. Sichelman, Christopher Michael Holman, Saurabh Vishnubhakat, Jay P. Kesan, Irina D. Manta, Adam Mossoff.

Erika Arner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Reston, VA, for amicus curiae American Intellectual Property Law Association. Also represented by Daniel C. Tucker ; Joshua Goldberg, Washington, DC; Mark L. Whitaker, Morrison & Foerster LLP, Washington, DC.

Kenneth J. Weatherwax, Lowenstein & Weatherwax LLP, Los Angeles, CA, for amicus curiae Biotechnology Innovation Organization. Also represented by Nathan Nobu Lowenstein, Jonathan H. Steinberg.

Sean Daniel Jordan, Jackson Walker LLP, Austin, TX, for amicus curiae WesternGeco LLC.

Jeffrey A. Lamken, MoloLamken LLP, Washington, DC, for amicus curiae Elm 3DS Innovations, LLC.

Gregory A. Castanias, Jones Day, Washington, DC, for amicus curiae Intellectual Property Owners Association. Also represented by David B. Cochran, Cleveland, OH; John Marlott, Israel Sasha Mayergoyz, Chicago, IL; Mark W. Lauroesch, Intellectual Property Owners Association, Washington, DC; Steven W. Miller, Procter & Gamble Company, Cincinnati, OH; Kevin H. Rhodes, 3M Innovative Properties Company, St. Paul, MN.

Stanley Joseph Panikowski, III, DLA Piper US LLP, San Diego, CA, for amici curiae Oracle Corporation, Oracle OTC Subsidiary, LLC. Also represented by Mark D. Fowler, East Palo Alto, CA; James Martin Heintz, Reston, VA.

Joseph Guerra, Sidley Austin LLP, Washington, DC, for amicus curiae Apple Inc. Also represented by Thomas Anthony Broughan, III, Jeffrey Paul Kushan.

Paul D. Clement, Kirkland & Ellis LLP, Washington, DC, for amicus curiae Intel Corporation. Also represented by George W. Hicks, Jr. ; Sopan Joshi, Chicago, IL; Matthew John Hult, Intel Corporation, Santa Clara, CA.

Before Prost, Chief Judge, Newman, Lourie, Bryson,¹ Dyk, Moore, O'Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll, Circuit Judges.

Opinion for the court filed by Circuit Judge Reyna, in which Chief Judge Prost and Circuit Judges Newman, Moore, O'Malley, Wallach, Taranto, Chen, and Stoll join.

Concurring opinion filed by Circuit Judge O'MALLEY .

Dissenting opinion filed by Circuit Judge HUGHES , in which Circuit Judges LOURIE, BRYSON , and DYK join.

Reyna, Circuit Judge.

Congress has prohibited the Director of the United States Patent and Trademark Office from instituting inter partes review if the petition requesting that review 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. 35 U.S.C. § 315(b). Congress also provided that the Director's determination "whether to institute an inter partes review under this section shall be final and nonappealable." Id. § 314(d). The question before us is whether the bar on judicial review of institution decisions in § 314(d) applies to time-bar determinations made under § 315(b). In Achates Reference Publishing, Inc. v. Apple Inc. , 803 F.3d 652, 658 (Fed. Cir. 2015), a panel of this court held in the affirmative that a § 315(b) time-bar determination is final and nonappealable under § 314(d). Today, the court revisits this question en banc.

We recognize the strong presumption in favor of judicial review of agency actions. To overcome this presumption, Congress must clearly and convincingly indicate its intent to prohibit judicial review. We find no clear and convincing indication of such congressional intent. We therefore hold that the time-bar determinations under § 315(b) are appealable, overrule Achates 's contrary conclusion, and remand these cases to the panel for further proceedings consistent with this opinion.

I. BACKGROUND

A. America Invents Act

In 2011, Congress passed the Leahy-Smith America Invents Act ("AIA"), which created inter partes review ("IPR") proceedings. See Pub. L. No. 112-29, § 6(a)–(c), 125 Stat. 284, 299–305 (2011); 35 U.S.C. §§ 311 – 319. IPR and other post-grant proceedings are intended to be quick and cost effective alternatives to litigation for third parties to challenge the patentability of issued claims. H.R. Rep. No. 112-98, pt. 1, at 48 (2011); 157 Cong. Rec. 2,710 (2011) (statement of Sen. Grassley). Sections 311 and 312 of Title 35 establish who may petition for IPR, the grounds for review in an IPR, the earliest permitted time for a petition for an IPR, and the requirements of the petition for an IPR. Under § 311, a person who is not the owner of a patent may petition the Director to institute IPR of one or more patent claims on permitted grounds, alleging unpatentability on certain prior art bases. Section 312 provides that the petition must, among other things, "identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim." 35 U.S.C. § 312(a)(3). Section 313 provides that the patent owner may file a preliminary response to the petition.

In § 314, subsection (a) prescribes the threshold "determin[ation]" required for the Director to institute: a "reasonable likelihood" that the petitioner will succeed in its patentability challenge to at least one of the challenged patent claims. Subsections (b) and (c) prescribe the timing of and notice requirements for the institution decision. And § 314(d) addresses judicial review of the Director's IPR institution determination under § 314. Specifically, § 314(d) provides that "[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable."² (emphasis added).

The remainder of the IPR-related provisions of the AIA go beyond the preliminary procedural requirements and the preliminary determination regarding likely unpatentability. Section 315, for example, governs the relationship between IPRs and other proceedings conducted outside of the IPR process. The provision at issue in this appeal, § 315(b), provides that "[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent." This one-year time bar does not apply to a request for joinder under § 315(c).

Section 316 addresses the "conduct of" IPRs, including amendments of the patent and evidentiary standards. Section 317 addresses settlement.

If the Director determines to institute IPR, in most cases, the Board must "issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner," as well as any new claims added during IPR. 35 U.S.C. § 318(a). Any party to IPR "dissatisfied" with the final written decision may appeal that decision to this court. Id. §§ 141(c), 319.

B. Achates

In 2015, a panel of this court decided the same issue before us today: whether § 314(d) precludes judicial review of § 315(b) time-bar determinations. In Achates , the Board canceled certain patent claims through IPR. 803 F.3d at 653. On appeal, the patent owner argued that the Board acted outside of its statutory authority by instituting IPR on a petition that was time-barred under § 315(b). Id. The panel rejected this argument, holding that " 35 U.S.C. § 314(d) prohibits this court from reviewing the Board's determination to initiate IPR proceedings based on her assessment of the time bar of § 315(b), even if such assessment is reconsidered during the merits phase of...