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TAKEAWAY: Judicial review is available to challenge the PTO’s decision as to whether a petition for inter partes review meets the timeliness requirement of 35 U.S.C. § 315(b).

In Wi-Fi One, LLC v. Broadcom Corp., the Federal Circuit sat en banc to consider whether the statutory prohibition against appealing the PTO’s determination to institute an inter partes review (IPR) proceeding also applies to determinations based on the time-bar provisions set forth 35 U.S.C. § 315(b).

35 U.S.C. § 314(d) states that the “determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” And, 35 U.S.C. § 315(b) prohibits the Director from instituting an IPR “if the petition requesting the proceeding is filed more than 1 year after 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.” In Achates Reference Publishing, Inc. v. Apple Inc., the Federal Circuit previously held that the PTO’s § 315(b) time-bar determination is final and nonappealable under Section 314(d). The Wi-Fi One en banc panel ruled differently, however.

As explained in the majority’s opinion, the en banc panel failed to find any “clear and convincing” indications in the “specific language,” “specific legislative history,” or “inferences of intent drawn from the statutory scheme as a whole” that Congress intended to bar review of determinations based Section 315(b). As a result, therefore, the court reversed Achates, and held that judicial review indeed is available for time-bar determinations under § 315(b).