By: Katie Bates

In a 9-4 decision on Monday, the Federal Circuit Court of Appeals rules that a Patent Trial and Appeal Board (PTAB) decision that an inter partes review petition was timely filed is appealable.

(The case is Wi-Fi One LLC v. Broadcom Corp., Case No. 15-1944, and a copy of the opinion is available here.)


The America Invents Act (“AIA”) provides for inter partes review only if the petition requesting review is filed within one year after the petitioner (or a company with which it has a legal relationship) is served with a complaint alleging infringement. 35 U.S.C. § 315(b). Specifically, that limit is placed on the Board’s ability to institute inter partes review.

Identifying this time-bar as a “statutory limit[] on [the Board]’s authority to act,” the Federal Circuit stated that the time-bar-related decision to institute “is precisely the type of issue that courts have historically reviewed” and that is properly reviewed by this court. The Court’s decision was based on “the strong presumption in favor of judicial review of agency actions” and the need for “clear and convincing indication of … congressional intent” to overcome that presumption, which it did not find.

A strong dissent, focused on the AIA’s provision that provides, “whether to institute an inter partes review under this section shall be final and nonappealable,” § 314(d), was written by Judge Hughes and joined by Judges Lourie, Bryson, and Dyk.

The Court’s decision overturns the prior panel decision in Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015), which held in the affirmative that a § 315(b) time-bar determination is final and nonappealable under § 314(d).