Los Angeles, CA – January 9, 2018 –

On January 8, 2018, the full U.S. Court of Appeals for the Federal Circuit ruled on en banc rehearing, in Wi-Fi One v. Broadcom (link), that decisions to institute inter partes review (IPR) by the USPTO Patent Trial and Appeal Board (PTAB) are appealable if the petitioners allegedly filed their petitions more than one year after challenging the same patent in court. Lowenstein & Weatherwax LLP submitted a brief in the case (link) on behalf of amicus curiae Biotechnology Innovation Organization (BIO), the principal trade organization representing the biotechnology industry, urging the en banc Court to reach that very result.

The brief argued that these determinations should be appealable because they are not “closely related to the Director’s . . . determination that the . . . petition shows a reasonable likelihood that the claims are unpatentable.” The Court, reaching a similar conclusion, held that these determinations are appealable because they are not “closely tied to the Director’s determination of a reasonable likelihood of unpatentability.”

The decision expressly overruled another case, Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) (link), cert. dismissed, 136 S. Ct. 998 (2016), in which L&W had filed a petition for certiorari, which had been dismissed pursuant to settlement just before the Supreme Court was to take it under consideration.