A “determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”  35 U.S.C. § 314(d).  A series of decisions from the Federal Circuit have clarified to what extent institution decisions are reviewable.  See St. Jude v. Volcano (CAFC lacks jurisdiction to review decision not to institute IPR); In re Dominion Dealer Sols. (denying mandamus petition seeking review of PTAB decision not to institute IPR); In re Cuozzo Speed (CAFC lacks jurisdiction to review institution decision even after a final decision); Versata v. SAP (CAFC has jurisdiction to review whether a patent is a “covered business method patent”); Achates v. Apple (CAFC lacks jurisdiction to review whether petition was time-barred); Synopsys v. Mentor Graphics (declining to review merits of PTAB decision to institute on some grounds but not others, but finding no statutory requirement that the Board address every claim raised in an IPR petition); Harmonic Inc. v. Avid Tech (CAFC lacks jurisdiction to review PTAB decision not to institute review on “redundant” grounds). 

The Federal Circuit’s Wi-Fi One v. Broadcom decision clarified that the Federal Circuit’s prior decision that it lacks jurisdiction to review whether a petition is time-barred remains good law after the Supreme Court’s Cuozzo Speed v. Lee decision. 

As background, Broadcom petitioned for IPR of the ‘215 patent, challenging numerous claims.  Prior to institution, Wi-Fi argued that Broadcom was in privity with entities involved in parallel district court litigation, and that because those entities would be time-barred from seeking IPR of the ‘215 patent, Broadcom was time-barred as well.  See 35 U.S.C. § 315(b).  Wi-Fi filed a motion seeking discovery to support its argument, but after briefing the Board denied the motion.  On appeal, Wi-Fi pressed its argument that Broadcom was barred from petitioning for IPR because it was in privity with a time-barred district court litigant.  While recognizing that Achates renders its challenge to the Board’s timeliness ruling nonappealable if Achates is still good law, Wi-Fi argued that the Supreme Court’s Cuozzo decision implicitly overruled Achates.  As noted by the Federal Circuit, the Cuozzo decision stated that the prohibition against reviewability applies to “questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.”  The Federal Circuit characterized § 315 as “just such a statute.”