Review Permitted for Time-Barred Petitions

January 10, 2018
Patent Office Trials Blog

Wi-Fi One, LLC v. Broadcom Corp. (Fed. Cir. 2018)

By David Emery

In an en banc decision, the Federal Circuit reigned in the scope of 35 U.S.C. § 314(d) by deciding that time-bar determinations under  § 315(b) are appealable.  While § 314(d) states that a determination whether to institute is nonappealable, the Court limited this prohibition to those issues “closely tied to the application and interpretation of statutes related to the institution decision” of § 314.  That is, issues “closely related” to the substantive “reasonable likelihood” decision.

Overruling the Court’s prior interpretation of § 314(d), which was used to prohibit a prior appeal of a time-barred determination under § 315(b), the decision emphasized the intervening Supreme Court decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016).  In Cuozzo, the Supreme Court recognized the “strong presumption” in favor of judicial review.  In that decision they emphasized “clear and convincing” indications derived from specific language, legislative history and the statutory scheme were required to defeat this presumption.   While Cuozzo ultimately decided against review of the certain determinations by the Director, this Court interpreted that holding as leaving the door open review of certain determinations.

In its analysis, the Court found no “clear and convincing” evidence of Congress’s intent to bar judicial review.  Referring to the language of § 314(d), which limits the application to “this section”, the Court found those issues relating to the threshold determination whether to institute nonappealable.  This determination, outlined in § 314(a), are limited to whether a petitioner shows a reasonable likelihood of success of prevailing with respect to at least 1 claim.  No other issues relevant to determining whether to institute are defined in this section.

In contrast to the decision with respect to § 315(b), the Court noted that sections 311-13 are preliminary procedural requirements that are more closely related to the determination of § 314(a) by the Director.  On the other hand, §315(b) was distinguished from these sections because it is not related to that determination and has no relation to patentability merits.  The decision also noted that § 315 is a limit on statutory authority – issues that have traditionally been reviewed.


Dave Emery

Email: demery

Mr. Emery practices in all areas of patent law including: patent preparation and prosecution; patent litigation; patent reexamination (ex parte and inter partes); and counseling clients on intellectual property matters. He also engages in patent infringement and validity opinion practice and counseling, freedom to operate analysis, and due diligence and product clearance work.

His experience includes a wide range of electrical and mechanical technologies, including medical devices, heating and cooling systems, hydraulic applications, semiconductor design and manufacture, telecommunications equipment, automotive technologies, electrical power generation equipment, electrical transmission components, electric vehicles, welding equipment, image display devices, fiber optic distribution, and various computer and printer related technologies.