Since the Federal Circuit's 2018 en banc decision in Wi-Fi One, LLC v. Broadcom Corporation, (discussed here) the court has reviewed a number of PTAB decisions on whether an IPR petition was filed more than one year after the petitioner was served with a complaint asserting the challenged patent, and thus time-barred under 35 U.S.C. § 315(b) (see here, here, here). But a patent owner's time-bar challenge must be timely raised before the PTAB, and may be waived if raised for the first time on appeal. In cases addressing three related IPR decisions, the court determined that the patent owner waived its time-bar challenges by failing to raise them before the PTAB. Acoustic Tech., Inc. v. Itron Networked Solns., Inc., No. 2019-1059 (Fed. Cir. Feb. 13, 2020); Acoustic Tech., Inc. v. Itron Networked Solns., Inc., No. 2019-1061 (Fed. Cir. Feb. 13, 2020).
In response to infringement complaints, Petitioner Silver Spring Networks, Inc. filed IPR petitions challenging two patents owned by Acoustic Tech. The petitions were timely filed within one year of service of the complaints. However, only a few days after the IPRs were instituted, the petitioner agreed to merge with Intron Networked Solutions, Inc., which had been sued for infringement of the same patents six years earlier. The Silver Spring–Intron merger was completed a few months later, while the IPRs were still pending, and Silver Spring promptly filed updated mandatory notices, identifying Intron as the real-party-in-interest. The Patent Owner did not raise the time-bar issue before the PTAB, which issued final written decisions several months later, determining that the challenged claims were unpatentable.
On appeal, the Patent Owner argued that the IPRs were time-barred under § 315(b) because Intron was the real-party-in-interest and had been served with an infringement complaint more than one year before the IPR petitions were filed. The Patent Owner further argued that raising the time-bar issue for the first time on appeal was appropriate because the time-bar issue is jurisdictional and may be raised at any time. The Federal Circuit determined that the Patent Owner waived its time-bar challenge to the IPRs because it failed to present those arguments before the PTAB.
Application of waiver is within the court's discretion, and the court determined that applying waiver was appropriate, because raising the issue for the first time on appeal deprived the court of the benefit of the PTAB's informed judgment. The court further noted that permitting time-bar challenges to be raised for the first time on appeal would provide the Patent Owner with an unfair advantage of raising the time-bar issue only if it lost the case on the merits:
But allowing Acoustic to raise a time-bar challenge for the first time on appeal would afford it a significant and unfair advantage: Acoustic could wait for the Board's decision on the merits, which if favorable would have estoppel effect, and then challenge the Board's jurisdiction on appeal only if the Board finds the claims obvious.
These cases make clear that time-bar challenges must be timely raised before the PTAB, and that waiting to raise a time-bar challenge until appeal may result in a waiver of a patent owner's time-bar defense.
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