Wi-Fi One v. Broadcom: Mine-Runs and Shenanigans in Inter Partes Review

by Dennis Crouch

Wi-Fi One v. Broadcom (Fed. Cir. 2017)

First en banc order of the year: the Federal Circuit will review the following question:

Should this court overrule Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) and hold that judicial review is available for a patent owner to challenge the PTO’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review?

en banc order. Briefs of amicus curiae may be filed without consent.

One Year Filing Deadline: Section 315(b) creates a statute of limitations for inter partes review proceedings – indicating that the petition for IPR must be filed within one-year of “the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”  Here, Wi-Fi argues that Broadcom was in privity with entities involved in parallel district court litigation involving challenged patents — creating a time bar under 315(b).

The PTAB rejected Wi-Fi’s argument and call for discovery on the issue — holding that the “privy” requirement could only be met if Broadcom had the right to control the District Court litigation.

No Appeal: On appeal, the Federal Circuit affirmed – holding Section 314(d) prohibits appellate review of the institution issue.  In particular Section 314(d) states that

The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.

In Achates, the court ruled that the one-year-deadline determination is an institution decision – “even if such assessment is reconsidered during the merits phase of proceedins and restated as part of the Board’s final written decision.”

In the background stands the 2016 Supreme Court decision in Cuozzo.  In that case, the Supreme Court gave effect to the no-appeal provision of 314(d).  However, the Supreme Court noted that unusual questions – such as constitutional questions – might still be appealable.  The foundation for the en banc review decision will be its interpretation of the following Cuozzo excerpts:

We conclude that [314(d)], though it may not bar consideration of a constitutional question, for example, does bar judicial review of the kind of mine-run claim at issue here, involving the Patent Office’s decision to institute inter partes review. . . .

Nevertheless, in light of §314(d)’s own text and the presumption favoring review, we emphasize that our interpretation applies where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review. See §314(d) (barring appeals of “determinations . . . to initiate an inter partes review under this section” (emphasis added)). This means that we need not, and do not, decide the precise effect of §314(d) on appeals that implicate constitutional questions, that depend on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond “this section.” . . .  Thus, contrary to the dissent’s suggestion, we do not categorically preclude review of a final decision where a petition fails to give “sufficient notice” such that there is a due process problem with the entire proceeding, nor does our interpretation enable the agency to act outside its statutory limits by, for example, canceling a patent claim for “indefiniteness under §112” in inter partes review. Such “shenanigans” may be properly reviewable in the context of §319 and under the Administrative Procedure Act, which enables reviewing courts to “set aside agency action” that is “contrary to constitutional right,” “in excess of statutory jurisdiction,” or “arbitrary [and] capricious.”

The question then for court is whether we have a shenanigan here.

 

 

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

23 thoughts on “Wi-Fi One v. Broadcom: Mine-Runs and Shenanigans in Inter Partes Review

  1. However, the Supreme Court noted that unusual questions – such as constitutional questions

    Attention Mr. Paul Morgan (and any other constitutional question naysayers)…

    1. That is, of course, irrelevant to this Fed. Cir. en banc question, but please feel free to actually file an amicus brief [for once] supporting another [5th?] Constitutional challenge to the AIA statute and the current reexamination statutes.

      1. Irrelevant…?

        The quote I used was not from me.

        Further, my arguments have not been tied to the Fifth.

        Aim better, Mr. Paul Morgan.

            1. I would add then, that the previous attempts were each flawed – and their flaws highlighted by yours truly on these very boards.

              The better Constitutional argument remains to be made in an actual case – the one that I have put on the table for discussion that Mr. Paul Morgan seems to disdain so much (and the one that Ned seems unable to grasp – even though he repeatedly whines about the very sticks taken from the bundle of property rights at the institution decision point of IPR.

              1. The only thing “disdainful” [your words, not mine] is clogging this blog and misleading any gullible readers with hundreds of pointless unsupported personal allegations of unconstitutionality, never properly expressed in anything even approaching a valid amicus brief with on-point Sup. Ct. citations. Even after 5 genuine serious Sup. Ct. attempts have failed. Also, ignoring how rarely entire Acts of Congress are declared unconstitutional.

                1. Lol – clogging the blog?

                  Really?

                  Where is that memo that blog posts must be of Amicus Brief quality?

                  As to “misleading any gullible readers,” it is quite obvious – since you have ever refused to bother discussing the points that I have presented, that you must be either:

                  a) speaking about somebody else, or

                  b) too cowardly to bother having a discussion on the merits in order to prove your point about anyone’s views being misleading.

                  Maybe you want to do more than just snipe from the sidelines there, Mr. Paul Morgan.

                2. As to the “genuine” items, you also overlook the posts that I have provided as to the weaknesses of those items.

                  Again, when the subject comes up, you rather hide from the discussion.

      2. Cert denied this morning in Ethicon. Ethicon is not exactly a constitutional challenge to the IPR statutes, but it comes to the same thing (an attempt to get all existing IPR judgments wiped out as ultra vires). In other words, that is ~5.5 failed attempts.

  2. It would not be at all surprising if the Fed. Cir. would say that a clear direct violation by the petitioner itself of the one year statutory bar deadline for filing an IPR more than a year after that petitioner was served with an infringement suit complaint is now an appealable issue. [At least as part of an appeal of the final IPR Board decision? Leaving unresolved, or sustained, the two prior Fed. Cir. decisions baring ab initio mandamus actions against initiation?]
    However, that is not the same situation as where the patent owner is asserting that the petitioner is barred, not by its own delay, but for allegedly being a “privy” to some other non-party entity that was sued more than a year before. The latter will almost always involve disputed facts. Also it involves a legal ambiguity as to what IS a legal “privy” – in general or in this particular statute. The PTAB has been providing specific definitions and proof requirements for this, where asserted. Will the Fed. Cir. wade into that, or give any deference to the PTO on this issue? Will they demand expanded discovery? From third parties? I.e., this is NOT just a simple question of whether or not Achates Reference Publishing, Inc. v. Apple Inc. will be overruled.

    1. P.S. if you think you understood what “privy” means [legally, not in the outdoor plumbing business] check out the useless definitions of it in legal dictionaries [as I did before this statute’s enactment] and note the following short article:
      link to postgrantproceedings.com

      1. Black’s Law Dictionary 2014:

        privy (priv-ee) n. pl. (15c) A person having a legal interest of privity in any action, matter, or property; a person who is in privity with another. • Traditionally, there were six types of privies: (1) privies in blood, such as an heir and an ancestor; (2) privies in representation, such as an executor and a testator or an administrator and an intestate person; (3) privies in estate, such as grantor and grantee or lessor and lessee; (4) privies in respect to a contract — the parties to a contract; (5) privies in respect of estate and contract, such as a lessor and lessee where the lessee assigns an interest, but the contract between lessor and lessee continues because the lessor does not accept the assignee; and (6) privies in law, such as husband and wife. The term also appears in the context of litigation. In this sense, it includes someone who controls a lawsuit though not a party to it; someone whose interests are represented by a party to the lawsuit; and a successor in interest to anyone having a derivative claim. Pl. privies.

        1. Thanks, and let’s look at the only relevant part of this definition, for this case, which is: “.. includes someone who controls a lawsuit though not a party to it; someone whose interests are represented by a party to the lawsuit; and a successor in interest to anyone having a derivative claim.”
          Note that “includes” is open-ended, not inclusive. While “controls” is pretty clear, “someone whose interests are represented by a party to the lawsuit” is unreasonably over-broad unless “represented” is narrowly interpreted. Otherwise it could literally include anyone who has an interest in that party winning the litigation – e.g. thousands of drivers hoping a party challenging a red light camera system will find them illegal, tens of thousands of purchasers of a patented drug hoping the party challenging that patent will succeed to save them money, or any of numerous defendants sued on the same patent even if a party filing an IPR [or DJA] did an uncoordinated bad job and the other defendants had never indicated an interest in having anything to do with that particular IPR, etc. [The latter is not that unusual – there have been several situations in which only one or two of plural patent suit defendants filed IPRs]
          It will be interesting to see what the Fed. Cir. does. I have no dog in this fight, but would simply hate to see the primary goal of IPRs [getting a decision in a year or less, before a D.C. trial, on just patent or publication prior art] derailed by a significantly increased initial time delay over an alleged “privy” dispute. That issue needs to be decided quickly.

          1. P.S. Of course the Fed. Cir. is not bound by Black’s or any other Law Dictionary in deciding what “privies” are in this particular statute, and thus could come up with a definition of their own, especially since the article I cited above says there is no legislative history for that.

            1. Paul,

              Is that the same “type” of “more discretion” that the Supreme Court seems to want to push lower and lower with its “anti-bright line” patent jurisprudence (and for which, the venue issue is also embroiled in)?

    2. Adding to those complex issues [and/or potentially unintended increased expense and delay consequences] to consider in this case, a recent F&H law firm blog wisely notes that: “Similar issues that may be affected by this decision include [challenges to] who the “real party in interest” is behind an IPR (under 35 U.S.C. 312), whether a too-late IPR petition can be joined with an in-time petition to avoid the one-year problem (under 35 U.S.C. 315), and whether a subsequent IPR petition is estopped by the filing of an earlier petition (under 35 U.S.C. 315).”

    3. [A] clear direct violation by the petitioner itself of the one year statutory bar deadline for filing an IPR more than a year after that petitioner was served… is not the same situation as where the patent owner is asserting that the petitioner is barred, not by its own delay, but for allegedly being a “privy” to some other non-party entity… I.e., this is NOT just a simple question of whether or not Achates Reference Publishing, Inc. v. Apple Inc. will be overruled.

      I am not sure that I follow what you are saying. Achates did not involve a one-year time bar by a party-defendant. It involved an alleged time bar based on Apple’s supposed “privity” to a party-defendant. In other words, the very complications you name were at issue in Achates.

      That said, I agree that the CAFC would do well not to use this case to settle issues of privity. It would be enough for the en banc court to say that 35 U.S.C. § 314(d) does not preclude setting an IPR aside as ultra vires when the § 315(b) or (e) bars are violated. It can remain for future appeals to work out what is and is not “privity” within the scope of § 315.

      1. Yes Greg, those “very complications .. were at issue in Achates.” Hence, my [and others] concerns. Yes, the Fed. Cir. could simply overrule Achates en banc, and leave all those tough, practical effect, resultant issues in limbo to only be decided later on in later appeals, after various parties have wasted time and money on them.

        1. All other things being equal, I am not in favor of wasting time and money, but in this case I do not see what alternative exists. If the en banc court remands to the panel, the panel can and should consider privity issues in this case. It seems like rather an unnecessary over-reach for the en banc court to tackle so large an issue as privity in the first instance. The panel barely touched the privity issue, except to note that the PTO “conducts a flexible analysis that seeks to determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.” 120 U.S.P.Q.2d 1126, 1130. If the original panel said so little on the subject, it hardly seems fitting for the en banc review to tackle the issue in the first instance. Let the remand panel say what needs to be said about “privity.”

          1. Good point Greg – I hope the Fed. Cir. panel on remand at least requests new briefings on the “privy” definition [in the AIA] issue if that is not covered well in party and/or amicus briefs in this en banc consideration.

    4. The legislative history pointed to Taylor v. Sturgell, 128 S. Ct. 2161 – Supreme Court 2008, link to scholar.google.com
      as controlling law as to the meaning of privity. There is little doubt that the PTAB ignores Taylor, and instead all but requires control, only one (Fourth)of the six categories of privity recognized by Taylor.

      The whole idea of privity is to determine when a nonparty is bound by a judgment. In all cases, due process requires notice before a non party can be bound.

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