Some PTAB Procedural Decisions Can Be Appealed

In January 2018, the United States Court of Appeals for the Federal Circuit issued its en banc decision in Wi-Fi One, LLC v. Broadcom Corp., holding that Patent Trial and Appeal Board (PTAB) time-bar determinations (the one-year statutory time bar) in an inter partes review (IPR) proceeding are appealable. The en banc decision overrules a panel’s earlier decision in Achates Reference Publishing Inc. v. Apple Inc.

The majority opinion held that a determination considering whether the one-year statutory time bar has been met is appealable. In holding that paragraph (d) of the authority to institute statute does not bar judicial review of a determination considering whether the one-year statutory time bar has been met, the majority relied on “the strong presumption favoring judicial review of administrative actions” and found no convincing indication of congressional intent to prohibit review. In reaching this conclusion, the majority reviewed both the statutory language and the statutory scheme.

Although the court’s decision permits appeal of some decisions to institute an IPR, it did not address when the appeal can be filed. If interlocutory appeals are permitted, it will delay the statutory mandate that IPR decisions be made within one year of institution. If a final decision in the IPR must be in hand, this could leave a cloud hanging over patents with claims determined to be invalid by the PTAB, while the appellate court could decide the institution was improper in the first place.