On January 8, 2018, the United States Court of Appeals for the Federal Circuit announced its decision in favor of McKool Smith client Wi-Fi One LLC, ruling en banc that decisions by the Patent Trial and Appeal Board (PTAB) on the America Invents Act’s time-bar for inter partes reviews (“IPRs”) are subject to appeal. The decision overrules previous decisions that prohibited appeals of time-bar findings and provides Wi-Fi One a new opportunity to demonstrate that Broadcom’s IPR challenge to Wi-Fi One’s online messaging patent was subject to the time-bar restriction.

In its decision (available here), the full Court ruled by a vote of 9 to 4 that “the time-bar determinations under §315(b) are appealable.” The Court also noted that it recognizes “the strong presumption in favor of judicial review of agency actions. To overcome this presumption, Congress must clearly and convincingly indicate its intent to prohibit judicial review. We find no clear and convincing indication of such congressional intent.”

“This is a very significant decision that could very well open the door to future IPR appeals,” said McKool Smith Principal Douglas A. Cawley, lead counsel for Wi-Fi One. “The Federal Circuit’s ruling means that the case will return to the Federal Circuit, which could decide itself whether the petition is or is not time-barred, or send the case back to the PTAB for further proceedings. Either way, our client is pleased with the Federal Circuit’s ruling.”

The patent-in-suit is U.S. Patent Number 6,772,215.

The case is Wi-Fi One LLC v. Broadcom Corp., case number 2015-1944, in the U.S. Court of Appeals for the Federal Circuit.

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 For more information, please contact Michael R. Coston (212) 402-9450 or mcoston@mckoolsmith.com.

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