Background
Wi-Fi One, LLC held patents covering wireless networking technology and filed infringement suits in district court. Broadcom Corporation, a defendant in those suits, later petitioned the Patent Trial and Appeal Board (PTAB) to institute inter partes review (IPR) of Wi-Fi One’s patents. Wi-Fi One argued that Broadcom’s petitions were barred under 35 U.S.C. §315(b), which prohibits IPR petitions filed more than one year after the petitioner is served with a complaint alleging infringement. The PTAB disagreed and instituted review anyway, finding the time bar did not apply.
Wi-Fi One sought to appeal the time-bar ruling to the Federal Circuit. The problem: §314(d) of the America Invents Act states that the PTAB’s decision whether to institute an IPR “shall be final and nonappealable.” In a prior en banc decision, Achates Reference Publishing, Inc. v. Apple Inc. (2015), the Federal Circuit had interpreted that provision broadly, holding that all aspects of the institution decision—including §315(b) time-bar determinations—were unreviewable. Wi-Fi One asked the court to revisit that holding.
The Court’s Holding
In a 9-4 en banc decision, the Federal Circuit overruled Achates and held that §315(b) time-bar determinations are appealable. Writing for the majority, Judge Reyna reasoned that the presumption of judicial review of administrative action is a strong one, and Congress must speak clearly to overcome it. Section 314(d)’s bar on appeals of institution decisions is aimed at preventing piecemeal review of the merits of whether to institute—not at insulating PTAB rulings on jurisdictional or eligibility prerequisites from all judicial oversight.
The majority drew a distinction between the PTAB’s discretionary judgment about whether a petition presents a reasonable likelihood of success (which §314(d) protects from appeal) and statutory requirements that set the conditions under which the PTAB has authority to act at all. Because §315(b) defines who may petition for IPR—placing time limits tied to related litigation—a PTAB error on that question is a legal error about the agency’s jurisdiction, not a discretionary decision about institution merits. Such errors fall outside §314(d)’s appeal bar.
The four-judge dissent, led by Judge Hughes, argued that the statutory text was unambiguous: §314(d) says the institution decision “shall be final and nonappealable,” and that language should be read to cover all rulings incorporated into the institution decision—including time-bar rulings. The dissenters cautioned that the majority’s approach would invite piecemeal satellite litigation over threshold procedural issues, exactly what Congress sought to avoid when it designed the AIA’s streamlined review system.
Key Takeaways
- PTAB rulings on the §315(b) one-year time bar are now judicially reviewable—a patent owner whose IPR petition opponent is time-barred has a meaningful appellate remedy.
- Achates is overruled; the Federal Circuit will apply a narrower reading of §314(d)’s appeal bar, limited to the PTAB’s discretionary merits judgments about institution.
- Other statutory prerequisites for IPR (such as §315(a) and §315(e) estoppel provisions) may similarly be reviewable under the majority’s reasoning—creating potential litigation hooks on multiple threshold issues.
- Patent owners challenging the timeliness of IPR petitions should raise §315(b) arguments robustly at the PTAB, knowing that an adverse ruling can be appealed to the Federal Circuit.
Why It Matters
When Congress created the IPR system in 2012, it tried to make the process fast and final—hence the bar on appealing institution decisions. But the one-year time limit in §315(b) serves an important policy purpose: it prevents defendants from sitting on their hands during district court litigation and then using IPR as a backup after the case gets difficult. When the PTAB incorrectly ignores the time bar, patent owners could lose their patents in a proceeding that should never have started.
Wi-Fi One restored a meaningful check on that problem. By making time-bar determinations reviewable, the Federal Circuit ensured that IPR petitioners cannot evade a clear statutory limit simply because the PTAB failed to enforce it. The decision opened a new front in IPR litigation strategy: patent owners now routinely brief §315(b) issues aggressively, knowing a Federal Circuit appeal is available if the PTAB gets it wrong. The Supreme Court subsequently addressed related questions in Thryv, Inc. v. Click-to-Call Technologies (2020), narrowing the scope of reviewability—but Wi-Fi One’s core holding on §315(b) time bars survived.