On January 4, 2017, the Court of Appeals for the Federal Circuit (Federal Circuit) granted a petition for rehearing en banc its decision in 837 F.3d 1329 (Fed. Cir. 2016)(“”). The question presented there was whether “judicial review is available for a patent owner to challenge the PTO’s [United States Patent and Trademark Office’s] determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review.” Inter partes review is one of three post-grant proceedings enacted under the America Invents Act of 2011 (AIA), and is available to challenge patents nine months after patent issuance on the limited basis of statutory novelty (35 U.S.C. § 102) and non-obviousness (35 U.S.C. § 103). The other two proceedings are post-grant review, which can be enforced to challenge patents within nine months after issuance on any basis, and a transitional provision of the AIA that applies the post-grant review proceeding to certain patents meeting the definition of “covered business methods.” A positive response to the question posed in the rehearing en banc inwould, according to the question on appeal, overrule a 2015 Federal Circuit decision, , 803 F.3d 652 (Fed Cir. 2015) (), holding that review of a decision by the Patent Trial and Appeal Board (Board) to institute inter partes review is unappealable for “whatever reason.” In deciding this question, the Federal Circuit will have to be consistent with the Supreme Court’s reasoning in , 136 S.Ct. 213 (), which held unappealable another prerequisite to institution of inter partes review. In the en banc case on appeal, Broadcom Corp. (Broadcom) petitioned for inter partes review of U.S. Patent No. 6,772,215, directed to a method for notifying a sender that a message sent through a telecommunications system includes errors. , LLC (Wi-Fi) challenged Broadcom’s standing to petition for inter partes review because of alleged privity with a district court litigant that would be time-barred under 35 U.S.C. § 315(b), which states, in part:

The Board denied a motion by Wi-Fi for discovery to support its allegation because Wi-Fi failed to establish even a “mere possibility” of “producing useful evidence.” Under any determination by the Board to institute an inter partes review is barred under 35 U.S.C. § 314(d) because, as stated in § 314(d), a “determination by the Director whether to institute an inter partes review under shall be final and nonappealable.” (Emphasis added.) Wi-Fi conceded the finality of the Board’s decision if the holding in was still good law, but argued that the Supreme Court’s decision in overruled by implication. According to Wi-Fi, the Court in limited “finality” to “questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review” and, therefore, precluded any unexceptional, or “mine-run” claims. Wi-Fi asserted that the time bar of 35 U.S.C. § 315(b) was not such a question, and that the decision by the Board to deny Wi-Fi’s request for discovery was “an example of the ‘shenanigans’ that the Supreme Court in suggested would be reviewable,” contrary to the absolute bar dictated by the Federal Circuit in The majority in disagreed, finding “nothing in the decision that suggests has been implicitly overruled,” and stated that reviewing the Board’s decision in this instance “would render routine procedural orders reviewable, contrary to the entire thrust of the decision.” In his concurring opinion, Judge Reyna agreed that Wi-Fi did not demonstrate privity, but argued that time-bar decisions by the Board were an exception to the “final and unappealable” restriction on decisions to institute inter partes review under 35 U.S.C. § 314(d). To do otherwise, according to Judge Reyna, would render the one-year time bar under § 315(b) “toothless” if the Board chose to ignore this statutory provision. Judge Reyna further argued that the time bar of § 315(b) was not the kind of “mine-run” claim cautioned against by the Supreme Court in , nor was it “some minor technicality.” The time bar for Judge Reyna was unrelated to the “initial determination of whether there is a reasonable likelihood the petitioner would prevail on the merits” that forms the basis for institution of inter partes review by the Board under § 314. Rather, “[c]ompliance with the time-bar is part of the statutory basis on which the final decision rests” and, therefore, should be subject to appeal as part of that final decision under 35 U.S.C. § 319, which states: A party dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 318(a) [final written decision in an inter partes review] may appeal the decision pursuant to sections 141 through 144 [appeal to Court of Appeals for the Federal Circuit]. Any party to the inter partes review shall have the right to be a party to the appeal. The Supreme Court in , for its part, held that a different section, namely 35 U.S.C. § 312(a)(3), requiring that the petition for inter partes review identify “in writing and with particularity each claim challenged,” was not subject to appeal. Presumably, the Court viewed the term, “,” in § 314(d) recited above to refer to any statutory provision regarding institution of inter partes review, rather than being limited to § 314 alone. The Court also gave examples of questions that were outside the Supreme Court’s holding. Those examples included questions of constitutionality, questions that “depend on other less closely related statutes,” and “questions of interpretation that reach, in terms of scope and impact, well beyond ‘.’” A particular example was that of cancelling a claim in inter partes review for statutory “indefiniteness under § 112,” stating that “[s]uch ‘shenanigans’ may be properly reviewable in the context of § 319 and under the Administrative Procedures Act.” As part of its decision regarding whether to overrule , the en banc panel of the Federal Circuit will have to decide whether the decision in has, in fact, been “implicitly overruled” by the Supreme Court in , as stated above, was directed to the particularity of the petition required under § 312(a)(3), and also was considered to be under the broad umbrella of “” of § 314(d). Both the one-year time bar in and the issue of particularity in Cuozzo were reviewed as being “closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review” and, therefore, unappealable. The Federal Court in , as in , held that the time bar under § 315(b) for filing petitions for inter partes review was unappealable. In determining whether to overrule , the en banc panel of the Federal Circuit in will have to be consistent with the Supreme Court’s decision in . There is, however, a conundrum to be faced by the Federal Circuit in their upcoming decision, which was presented by Justice Alito in his opinion, concurring in part and dissenting in part from the majority in . He presented a hypothetical that was based on the majority’s reference to the kinds of decisions that were viewed by the Supreme Court as being outside its holding in . In the hypothetical, Justice Alito posited that a petition to invalidate a claim as indefinite under 35 U.S.C. § 112 could be instituted under post-grant review after expiry of the nine-month period that defines this proceeding. According to Justice Alito, the majority’s reasoning would allow that decision to be overturned as untimely, but then instituted by the Board as an inter partes review or even a “covered business method” without the possibility of appeal because “the petition’s timeliness [in an inter partes review], no less than the particularity of its allegations, is [using the majority’s language] ‘closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate … review.’” In other words, a blanket bar against judicial review of decisions by the Patent Office to institute inter partes review could, in effect, collapse “Congress’s three-tiered review structure” of covered business method review, post-grant review, and inter partes review, thereby “subjecting all patents to broad post-grant review at all times,” a result that “Congress cannot have intended.” Justice Alito’s hypothetical presumes that the majority in would consider timeliness of petitions to file for inter partes review to be unappealable because no basis was provided for distinguishing between timeliness (under § 315(b)) and particularity (under § 312(a)(c)) with regard to the finality of decisions to initiate inter partes review under “” of § 314(d). He viewed a prohibition against appeal of timeliness and particularity in a decision to institute inter parte review as a threat to the entire post-grant system, potentially exposing all patents to “broad post-grant review at all times.” Therefore, according to Justice Alito, both timeliness and particularity subject to appeal. If Justice Alito’s understanding of the majority’s opinion in is correct, then the conundrum to be faced by the en banc panel in is this: If the en banc panel reverses the Board in and overrules by holding timeliness to be appealable, then it may be in conflict with Justice Alito’s understanding of the majority’s reasoning in that timeliness, like “particularity,” would both be considered “closely tied” to the Patent Office’s decision to institute inter partes review and, therefore, unappealable. On the other hand, if it affirms the Board’s decision in and , Justice Alito’s prophecy of collapse of the newly-minted post-grant system may be realized.