CAFC to Consider Popular IPR Time Bar Exception

WiFi One Opens the Door to Reconsideration of Well-Established PTAB Precedent

The Federal Circuit’s softening of the appeal bar (35 U.S.C. § 314(d)) in WiFi One will now allow the Court to consider matters unrelated to the merits of an institution decision, and in some cases, well-established precedent of the Patent Trial & Appeal Board (PTAB).

For example, in Oracle Corp. v. Click-to-Call Techs. LP Case IPR2013-00312, Paper 26 (Oct. 30, 2013), Section (III.A) was designated precedential.  This section explains that the dismissal of a lawsuit “without prejudice” nullifies the service of the complaint relative to 35 U.S.C. § 315(b).  The Federal Circuit announced last Friday that it can now consider this precedent, post WiFi One.

Due to an earlier remand between the Federal Circuit and PTAB on the Click-to-Call IPR, this 2013 dispute is still pending.  In an Order issued last Friday, the Court explained it will now consider whether or not this IPR should have been instituted in view of 315(b) (here):

" CTC asks the court to rehear its appeal, which centers on CTC’s contention that the Patent Trial and Appeal Board (“the Board”) erred in determining that inter partes review proceeding IPR2013-00312 was not barred by 35 U.S.C. § 315(b). The petition therefore requests relief that can be granted by the panel that heard the appeal. See Fed. Cir. R. 35 Practice Notes.

The panel determines that rehearing of CTC’s appeal is warranted in light of this court’s en banc opinion in Wi-Fi One, LLC v. Broadcom Corp., — f . 3d —, 2018 WL 313065 (Fed. Cir. Jan. 8, 2018) (en banc).

The PTAB’s precedent here rests on significant case law explaining the the impacts of a “without prejudice” dismissal on district court litigants. That is, such a dismissal renders the proceedings a nullity and leave the parties as if the action had never been brought.  However, CTC is likely to argue that the nullity aspect of such a dismissal is relative to district court rights and mechanisms, not the notice aspect of the original complaint filing — the purpose of 315(b) (i.e., to allow patent challengers one year to decide where to challenge validity once on notice of a patent dispute).

This is the first PTAB precedent to be challenged under the softened appeal bar. That said, petitioners should also be wary of other well-established precedent that is now subject to second guessing by the Federal Circuit.  Such precedent would include the exception to 315(a) for declaratory judgment filings not directed to invalidity, 315(b) decisions relating to amended complaints and related parties, as well as issues such as the inapplicability of equitable defense such as assignor estoppel.

Scott A. McKeown is an author of the Patents Post Grant.