McKool Smith Secures Federal Circuit En Banc Decision that PTAB Time-Bar Rulings Are Appealable

DALLASJan. 9, 2018 /PRNewswire/ — On January 8, 2018the 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.

With more than 180 trial lawyers across offices in AustinDallasHoustonLos AngelesMarshall, New York, Silicon Valley, and Washington, D.C., McKool Smith has established a reputation as one of America’s leading trial firms. Since 2006, the firm has secured ten nine-figure jury verdicts and twelve eight-figure jury verdicts. The firm has also won more VerdictSearch and The National Law Journal “Top 100 Verdicts” over the last ten years than any other law firm in the country. Courtroom successes like these have earned McKool Smith critical acclaim and helped the firm become what The Wall Street Journal describes as “one of the biggest law firm success stories of the past decade.” McKool Smith represents clients in complex commercial litigation, intellectual property, bankruptcy, and white collar defense matters.

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

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