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ARTICLE · 09 JANUARY 2018

CAFC Softens PTAB Appeal Bar

Ropes & Gray LLP
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As I predicted would happen last Spring, the Court held today in Wi-Fi One v. Broadcom that the appeal bar is limited to Director determinations closely related to the preliminary patentability determination...

United StatesIntellectual Property
Scott A. McKeown
Scott A. McKeown
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WiFi One Touchstone: Closely Related to Patentability Determination?

As I predicted would happen last Spring, the Court held today in Wi-Fi One v. Broadcom that the appeal bar is limited to Director determinations closely related to the preliminary patentability determination, or the exercise of discretion not to institute. As such, questions that may be fully and finally decided before a trial on the merits, such as 315(b), are no longer barred from appeal.

As a reminder, appeals from Inter Partes Review (IPR) decisions of the Patent Trial & Appeal Board (PTAB) are limited in scope by the "appeal bar" of 35 U.S.C. 314(d) — barring the appeal of matters relating to the institution of the IPR proceeding. The appropriate scope of this bar has now been reconsidered by the Federal Circuit in light of the Supreme Court's decision in Cuozzo Speed Technologies , LLC v. Lee (2016). Specifically, in WiFi One the Federal Circuit considered whether the requirements of 35

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