Adam Charnes. Photo: John Disney/Daily Report.

We meant what we said the first time.

That's what one expert on America Invents Act proceedings before the Patent Trial and Appeal Board thinks the Supreme Court is likely to say, now that it granted cert Monday in Dex Media v. Click-to-Call Technologies.

In 2016's Cuozzo v. Lee, the Supreme Court ruled 7-2 the PTAB's preliminary decisions to institute proceedings are—except in rare circumstances—unreviewable by the U.S. Court of Appeals for the Federal Circuit.

The Federal Circuit found one of those rare circumstances a year and a half later. The court ruled in a 9-4 en banc decision that whether a petitioner missed the AIA's one-year statutory filing deadline is reviewable. That one-year statute of limitations applies not only to petitioners but to any real party in interest, which can include indemnifiers or members of a joint defense group.

Jonathan Stroud, chief intellectual property counsel at Unified Patents, said his instinct is that decision, Wi-Fi One v. Broadcom, is going to get overruled. “I'm on record saying that after Cuozzo, only the patent bar and the Federal Circuit could hear a 7-2 decision saying 'almost everything is unreviewable' and say, 'OK, there must be some things that are reviewable.'”

Unified appears before the PTAB exclusively as petitioner. Kayvan Noroozi of Noroozi PC, who represents patent owners before the tribunal, has the 180-degree opposite take.

Noroozi points to 2018's SAS Institute v. Iancu, in which the Supreme Court found that the PTAB can't pick and choose which parts of a petition to institute. The justices found that practice easily met the exception of overstepping the PTAB's statutory authority and therefore was reviewable. The same would be true of applying the statutory time bar, Noroozi said.

The justices limited Dex Media to a single specific question: Whether 35 U.S.C. Section 314(d) permits appeal of the PTAB's decision to institute an inter partes review upon finding that 315(b)'s time bar did not apply.

Section 314(d) states: “NO APPEAL. The determination by the [USPTO] Director whether to institute an inter partes review under this section shall be final and nonappealable.” Section 315(b) states that review “may not be instituted” if petitioner fails to file a petition within a year of being served with a patent infringement complaint.

The Federal Circuit originally interpreted 314(d) as forbidding appellate review of time bar decisions. The Supreme Court ruled in Cuozzo that it applies to the decision to institute and “closely related” issues, but not if they deny due process or if the agency acts “outside its statutory limits.”

The Federal Circuit then ruled en banc in Wi-Fi One that the time bar is not “closely related” to the decision to institute and is therefore reviewable.

That's led to a slew of Federal Circuit opinions about timeliness and whether real parties in interest are running the litigation behind the scenes. The Federal Circuit just decided a time bar decision last week involving Merck Sharp & Dohme.

Kilpatrick Townsend & Stockton partner Adam Charnes argues in his cert petition for Dex Media Inc. that no appeal means no appeal.

“After the parties expended considerable effort and expense to litigate the IPR, Congress did not want 'the agency's final decision [to] be unwound under some minor statutory technicality related to its preliminary decision,'” he wrote, quoting Cuozzo.

The solicitor general's office and the PTO concur: “The jurisdictional ruling that the court adopted in Wi-Fi One LLC v. Broadcom Corp.,” they state in their brief, “reflects an unduly narrow view of Section 314(d)'s appeal bar.”

Like Noroozi, Click-to-Call counsel Daniel Geyser of Geyser PC argues that SAS v. Iancu should control. ”There is no need for this Court to spend its time confirming that SAS Institute meant what it said in construing the limited reach of Section 314(d),” Geyser writes in his opposition to cert.

Noroozi said he believes the AIA intended to shield the PTAB's preliminary decisions on patentability from review, because they become reviewable after final written decision. If the Supreme Court were to agree with Dex Media, patent owners would have no recourse whatsoever to challenge erroneous time bar rulings, he said.

As a practical matter, he'd be concerned that the PTAB might be less willing to grant meaningful discovery and fully dig into timeliness and related real-party-in-interest issues. “If they're not subject to appellate review, then what's the point?” he said.

Baker Botts partner Eliot Williams said that under PTO Director Andrei Iancu, the board has focusing more attention on decisions to institute, so whatever the Supreme Court decides may have limited impact.

Williams said he's disappointed the Supreme Court declined to take up the second question presented by Dex Media: whether the one-year clock keeps running when a suit is filed but then voluntarily dismissed. A lot of accused infringers are filing petitions at the PTAB just to be safe, even when there's no longer a live patent infringement dispute, Williams said.

“The PTAB is doing work it that it may not need to do,” he said.