NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

CLICK-TO-CALL TECHNOLOGIES, LP,

Appellant

v.

ORACLE CORPORATION, ORACLE OTC 

SUBSIDIARY, LLC, INGENIO, INC., 

YELLOWPAGES.COM, LLC,

Appellees

______________________ 

2015-1242

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2013-

00312.

______________________ 

Decided: November 17, 2016

______________________ 

 PETER J. AYERS, Lee & Hayes, PLLC, Austin, TX, for 

appellant. Also represented by REID G. JOHNSON, Spokane, WA.

 MARK D. FOWLER, DLA Piper US LLP, East Palo Alto, 

CA, for appellees Oracle Corporation, Oracle OTC Subsidiary, LLC. Also represented by STANLEY JOSEPH 
2 CLICK-TO-CALL TECHS., LP v. ORACLE CORP. 

PANIKOWSKI, III, San Diego, CA; JOHN GUARAGNA, Austin, 

TX; JAMES M. HEINTZ, Reston, VA.

 MITCHELL G. STOCKWELL, Kilpatrick Townsend &

Stockton LLP, Atlanta, GA, for appellees Ingenio, Inc., 

Yellowpages.com, LLC. Also represented by DAVID CLAY 

HOLLOWAY. 

 NATHAN K. KELLEY, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, for 

intervenor Michelle K. Lee. Also represented by MARY L.

KELLY, THOMAS W. KRAUSE, SCOTT WEIDENFELLER. 

______________________ 

Before O’MALLEY and TARANTO, Circuit Judges, and 

STARK, District Judge.*

Opinion for the court filed PER CURIAM. 

Concurring opinion filed by Circuit Judge O’MALLEY. 

Concurring opinion filed by Circuit Judge TARANTO. 

PER CURIAM. 

This case returns to us from the Supreme Court, 

which granted certiorari, vacated our previous judgment, 

and remanded for further consideration in light of Cuozzo 

Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016). 

Because we are bound by intervening precedent from this 

court to do so, we reinstate our earlier judgment and 

dismiss the appeal filed by Click-to-Call Technologies 

(“CTC”) in this matter. 

On November 25, 2014, CTC appealed from a final 

written decision of the Patent Trial and Appeal Board 

 

* The Honorable Leonard P. Stark, Chief District 

Judge, United States District Court for the District of 

Delaware, sitting by designation.
CLICK-TO-CALL TECHS., LP v. ORACLE CORP. 3

(“the Board”) on patentability in an inter partes review 

(“IPR”) proceeding. See Oracle Corp. v. Click-to-Call 

Techs., LP, No. IPR2013-00312, 2014 Pat. App. LEXIS 

8333 (P.T.A.B. Oct. 28, 2014). Specifically, CTC argued 

that the IPR proceedings should have been barred by 35 

U.S.C. § 315(b), which provides that an “inter partes 

review may not be instituted if the petition requesting the 

proceeding is filed more than 1 year after the date on 

which the petitioner . . . is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Prior 

to the Supreme Court’s decision in Cuozzo, we dismissed 

CTC’s appeal for lack of jurisdiction. Click-To-Call 

Techs., LP v. Oracle Corp., 622 F. App’x 907 (Fed. Cir. 

2015). We did so in light of this court’s previous decision 

in Achates Reference Publishing, Inc. v. Apple Inc., 803 

F.3d 652 (Fed. Cir. 2015), where we held that a party 

cannot challenge the Board’s decision to institute an IPR 

proceeding under § 315(b) because 35 U.S.C. § 314(d) 

“prohibits this court from reviewing the Board’s determination to initiate IPR proceedings based on its assessment 

of the time-bar of § 315(b), even if such assessment is 

reconsidered during the merits phase of proceedings and 

restated as part of the Board’s final written decision.” 

Click-To-Call, 622 F. App’x at 908 (quoting Achates, 803 

F.3d at 658).

After the Supreme Court granted CTC’s petition for 

certiorari, vacated our decision, and remanded the case, 

we ordered supplemental briefing to address the impact of 

Cuozzo on the continuing viability of our decision in 

Achates and, hence, in this matter. In its supplemental 

brief, CTC argues that Cuozzo requires this court to 

reconsider our holding in Achates. CTC asserts that 

Cuozzo limits § 314(d) to challenges that are “closely 

related” to the Board’s substantive patentability determination under § 314(a). According to CTC, the Supreme 

Court implicitly overruled our holding in Achates because 

the time bar under § 315(b) is not closely related to the 
4 CLICK-TO-CALL TECHS., LP v. ORACLE CORP. 

Board’s decision to institute under § 314(a). Cf. Wi-Fi 

One, LLC v. Broadcom Corp., No. 15-1944, 2016 U.S. App. 

LEXIS 16942, at *26 (Fed. Cir. Sept. 16, 2016) (Reyna, J., 

concurring) (“The time-bar question is not a ‘mine-run’

claim, and it is not a mere technicality related only to a 

preliminary decision concerning the sufficiency of the

grounds that are pleaded in the petition.”). CTC also 

argues that § 315(b) provides an independent jurisdictional limitation on the Board that goes beyond the scope 

of § 314(d). Cf. id. (“[T]he time bar deprives the Board of 

jurisdiction to consider whether to institute a review . . . .”).

Oracle Corp. (“Oracle”) and the United States Patent 

and Trademark Office (“PTO”) both argue that the Supreme Court’s analysis in Cuozzo not only did not overrule Achates, but supports our holding in Achates. They 

argue that the Supreme Court’s determination that 

§ 314(d) precludes review of an institution decision where 

the grounds for attacking the decision to institute are 

questions closely tied to those statutes authorizing the 

PTO to act mandates application of § 314(d) to a time-bar 

challenge brought under § 315(b). Oracle points to Justice Alito’s separate opinion in Cuozzo, concurring in part 

and dissenting in part, as support for its view of the 

majority’s reasoning. In that opinion, Justice Alito complains that “the petition’s timeliness, no less than the 

particularity of its allegations, is closely tied to the application and interpretation of statutes related to the Patent 

Office’s decision to initiate . . . review, and the Court says 

that such questions are unreviewable.” Cuozzo, 136 S. Ct. 

at 2155 (Alito, J., concurring in part and dissenting in

part) (internal quotations omitted).

After the parties submitted supplemental briefing in 

this case, we issued our decision in Wi-Fi One, which 

directly considers whether Achates remains good law after 

Cuozzo. In Wi-Fi One, a majority of the panel determined

that the Supreme Court’s decision in Cuozzo did not 
CLICK-TO-CALL TECHS., LP v. ORACLE CORP. 5

overrule our previous decision in Achates and that later 

panels of the court remain bound by Achates. See Wi-Fi 

One, 2016 U.S. App. LEXIS 16942, at *9-12. The majority 

concluded, moreover, that “[n]othing in Cuozzo casts 

doubt” on the interpretation of the statute we relied upon 

in Achates. Id. at *11.1

In deciding this case, we are bound by this court’s 

precedent in Wi-Fi One and, hence, in Achates. We therefore once more dismiss CTC’s appeal for lack of jurisdiction. Because we are bound by the holdings of Wi-Fi One

and Achates as to the scope of § 314(d), we do not address 

the parties’ arguments as to whether any error by the 

PTO in its institution decision is harmless based on the 

presence of other parties to whom the § 315(b) time bar 

would not apply.

DISMISSED

 

1 As noted above, Judge Reyna dissented from that 

aspect of the court’s decision.
NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

CLICK-TO-CALL TECHNOLOGIES, LP,

Appellant

v.

ORACLE CORPORATION, ORACLE OTC 

SUBSIDIARY, LLC, INGENIO, INC., 

YELLOWPAGES.COM, LLC,

Appellees

______________________ 

2015-1242

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2013-

00312.

______________________ 

O’MALLEY, Circuit Judge, concurring. 

As explained in the court’s opinion, our previous holding in Achates Reference Publishing, Inc. v. Apple Inc., 803 

F.3d 652 (Fed. Cir. 2015), determined that a party cannot 

challenge the Board’s decision to institute an IPR proceeding under § 315(b) because of the bar on judicial review of 

institution decisions in § 314(d). Since the Supreme 

Court’s decision in Cuozzo Speed Technologies, LLC v. 

Lee, 136 S. Ct. 2131 (2016), this court has reaffirmed that 

Achates remains good law. Wi-Fi One, LLC v. Broadcom 

Corp., No. 15-1944, 2016 U.S. App. LEXIS 16942 (Fed. 
2 CLICK-TO-CALL TECHS., LP v. ORACLE CORP. 

Cir. Sept. 16, 2016). Because we are bound by the court’s 

previous decisions in Achates and Wi-Fi One, I agree with 

the court’s dismissal of Click-to-Call’s (“CTC”) challenge 

under § 315(b). I write separately, however, to note that I 

believe the Supreme Court’s language in Cuozzo leaves 

room for us to question our reasoning in Achates and to 

suggest that we do so en banc. 

In explaining the scope of its opinion in Cuozzo, the 

Supreme Court clarified that, “contrary to the dissent’s 

suggestion, we do not categorically preclude review of a 

final decision where a petition fails to give ‘sufficient 

notice’ such that there is a due process problem with the 

entire proceeding, nor does our interpretation enable the 

agency to act outside its statutory limits . . . .” Cuozzo, 

136 S. Ct. at 2141. The Supreme Court then provided the

specific example of the Board addressing a claim’s definiteness under § 112 during an IPR proceeding despite 

Congress only authorizing the Board to consider challenges under §§ 102–03. Id. at 2141–42. We could apply the 

same reasoning to the Board’s institution of an IPR 

proceeding contrary to the direct statutory command that 

“[a]n inter partes review may not be instituted if the 

petition requesting the proceeding is filed more than 1 

year after the date on which the petitioner . . . is served 

with a complaint alleging infringement of the patent.” 35 

U.S.C. § 315(b) (emphasis added). As the Supreme Court 

noted in its opinion, “[s]uch ‘shenanigans’ may be properly 

reviewable in the context of § 319 and under the Administrative Procedure Act, which enables reviewing courts to 

‘set aside agency action’ that is . . . ‘in excess of statutory 

jurisdiction.’” Cuozzo, 136 S. Ct. at 2142 (quoting 5 

U.S.C. § 706(2)(A)–(D)).

The Supreme Court also stated that its “conclusion 

that courts may not revisit this initial determination 

gives effect to th[e] statutory command” of § 314(d). 

Cuozzo, 136 S. Ct. at 2141. To the extent the Supreme 

Court sought in Cuozzo to give effect to the statutory 
CLICK-TO-CALL TECHS., LP v. ORACLE CORP. 3

commands of Congress, permitting review of challenges 

brought under § 315(b) similarly would give effect to the 

statutory command that IPR proceedings “may not be 

instituted” when a petitioner files an untimely petition. 

See 35 U.S.C. § 315(b). It would also give effect to the 

statutory command that reviewing courts shall “set aside 

agency action” that is “in excess of statutory jurisdiction, 

authority, or limitations, or short of statutory right.” See

5 U.S.C. § 706(2)(C).

This reasoning and the plain language of the statute 

contradict a key underpinning of our reasoning in Achates. In Achates, we stated that “the § 315(b) time bar does 

not impact the Board’s authority to invalidate a patent 

claim—it only bars particular petitioners from challenging the claim.” 803 F.3d at 657. Although § 315(b) does 

not prevent another petitioner that is not time-barred 

from bringing a later challenge to the patent, the statute, 

as written, does not address who may bring a petition; 

Congress did not address the statute to petitioners or the 

identity of petitioners. Instead, the statute is addressed 

to the PTO and provides that “[a]n inter partes review 

may not be instituted if the petition requesting the proceeding” is time-barred under the requirements of the 

statute. 35 U.S.C. § 315(b) (emphasis added). As we 

explained in Intellectual Ventures II LLC v. JPMorgan 

Chase & Co., 781 F.3d 1372 (Fed. Cir. 2015), in the context of assessing when we may exercise jurisdiction over 

an appeal from institution decisions regarding covered 

business method patents (“CBMs”), Congress consistently 

differentiated between petitions to institute and the act of 

institution in the AIA. Id. at 1376. The former is what a 

party seeking to challenge a patent in a CBM proceeding, 

a derivation proceeding, a post-grant proceeding, or an 

IPR does—and of which the PTO reviews the sufficiency—

and the latter is what the Director of the PTO is authorized to do. Id. Because only the Director or her delegees 

may “institute” a proceeding, § 315(b)’s bar on institution 
4 CLICK-TO-CALL TECHS., LP v. ORACLE CORP. 

is necessarily directed to the PTO, not those filing a 

petition to institute. See id.

If the PTO exceeds its statutory authority by instituting an IPR proceeding under circumstances contrary to 

the language of § 315(b), then our court, sitting in its 

proper role as an appellate court, should review those 

determinations as Cuozzo suggests. See Cuozzo, 136 S. 

Ct. at 2141–42; 5 U.S.C. § 706(2)(C). Indeed, the court 

should address such actions in order to give effect to the 

limitations on the PTO’s statutory authority to institute 

proceedings expressly set forth in § 315(b). See Cuozzo, 

136 S. Ct. at 2141.

The PTO’s own regulations support this reading of 

§ 315(b); they clearly consider the possibility that the 

Board might mistakenly take actions in excess of its 

statutory jurisdiction. For example, Part 42 of Title 37 in 

the Code of Federal Regulations “governs proceedings 

before the Patent Trial and Appeal Board.” 37 C.F.R. 

§ 42.1(a) (2016). In addressing “Jurisdiction” for these 

proceedings, Part 42 expressly requires that “[a] petition 

to institute a trial must be filed with the Board consistent 

with any time period required by statute.” Id. § 42.3(b); 

see also id. § 42.2 (identifying IPR proceedings as falling 

within the definition of “trial”). A straightforward reading of these regulations indicates that the PTO believed at 

the time it issued those regulations that it would not have 

statutory jurisdiction or authority to institute proceedings—including IPRs—in response to petitions to institute 

filed outside the time limit set by statute for such filings. 

As Cuozzo indicated, such a decision would be reviewable 

under the Administrative Procedure Act. Cuozzo, 136 S. 

Ct. at 2142; see also 5 U.S.C. § 706(2)(C).

The policy underlying the Supreme Court’s reasoning 

in Cuozzo also indicates that courts should review institution decisions when the petition is not timely filed under

§ 315(b). In Cuozzo, the Supreme Court acknowledged 
CLICK-TO-CALL TECHS., LP v. ORACLE CORP. 5

the “strong presumption” in favor of judicial review when 

interpreting statutes. 136 S. Ct. at 2140 (citing Mach 

Mining, LLC v. EEOC, 135 S. Ct. 1645, 1650 (2015)). The 

Supreme Court explained that Congress can only overcome this presumption through “clear and convincing 

indications” that are “drawn from specific language, 

specific legislative history, and inferences of intent drawn 

from the statutory scheme as a whole.” Id. (internal 

quotation marks omitted) (quoting Block v. Cmty. Nutrition Inst., 467 U.S. 340, 349–50 (1984)). The Supreme 

Court determined that Congress provided clear and 

convincing evidence in § 314(d) that it intended to bar 

review of certain institution decisions. The Supreme 

Court then held that Cuozzo’s challenge under § 312 is 

barred by the scope of § 314(d) because “Cuozzo’s claim 

that Garmin’s petition was not pleaded ‘with particularity’ under § 312 is little more than a challenge to the 

Patent Office’s conclusion, under § 314(a), that the ‘information presented in the petition’ warranted review.” Id.

at 2142.

This reasoning does not translate to the text of

§ 315(b), however. Neither the challenge in Wi-Fi One, 

LLC v. Broadcom Corp., No. 15-1944, 2016 U.S. App. 

LEXIS 16942 (Fed. Cir. Sept. 16, 2016), nor the challenge 

here relates to whether the information presented in the 

petition warrants review; they instead challenge the 

fundamental statutory basis on which Congress has 

authorized the Director to institute an IPR proceeding. 

See 35 U.S.C. § 315(b) (“An inter partes review may not be 

instituted if the petition requesting the proceeding is filed 

more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of 

the patent.” (emphasis added)). The “strong presumption” 

in favor of judicial review encourages the review of such 

questions. 

To be clear, the Supreme Court in Cuozzo did not expressly state whether the scope of § 314(d) applies to the 
6 CLICK-TO-CALL TECHS., LP v. ORACLE CORP. 

time bar of § 315(b). And I agree with my colleagues in 

Wi-Fi One that Cuozzo did not overrule Achates. But the 

Supreme Court explicitly left open the possibility that the 

AIA might allow for challenges to certain Board decisions 

to institute an IPR proceeding. Cuozzo, 136 S. Ct. at 

2141–42. Although the Supreme Court did not decide the 

effect of § 314(d) on the precise challenge at issue here, it

referred to potentially viable constitutional challenges 

and challenges based on decisions which exceed the PTO’s

statutory authority. Id. Indeed, as noted above, the 

Supreme Court rejected the dissent’s view of the scope of 

the majority opinion—where Justice Alito expressed 

concern that timeliness challenges would become unreviewable under the majority’s reasoning—and explained 

that the Court’s holding “do[es] not categorically preclude 

review of a final decision” in at least some circumstances. 

Id. at 2141.

For these reasons, like Judge Taranto, I believe that 

this court, sitting en banc in an appropriate case, should 

reconsider Achates. I suggest we collectively assess

whether our reasoning in Achates comports with the 

precise language in the statutory provision it analyzes 

and should remain the law by which we are governed. 

Because this court’s precedent in Wi-Fi One and Achates

remain binding law on this panel at this time, I concur in 

the judgment we enter today. 
NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

CLICK-TO-CALL TECHNOLOGIES, LP,

Appellant

v.

ORACLE CORPORATION, ORACLE OTC 

SUBSIDIARY, LLC, INGENIO, INC., 

YELLOWPAGES.COM, LLC,

Appellees

______________________ 

2015-1242

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2013-

00312.

______________________ 

TARANTO, Circuit Judge, concurring.

In this case, a panel of the Patent Trial and Appeal 

Board, acting as delegee of the Director of the Patent and 

Trademark Office under 37 C.F.R. §§ 42.4, 42.108, instituted an inter partes review (IPR) under 35 U.S.C. ch. 31, 

at the behest of Oracle, of certain claims of Click-to-Call’s 

U.S. Patent No. 5,818,836. In instituting the review, the 

Board concluded that institution was not barred by 35 

U.S.C. § 315(b), which prohibits institution if more than a 

year has elapsed since certain infringement complaints 
2 CLICK-TO-CALL TECHS., LP v. ORACLE CORP. 

involving the patent at issue were served. In Click-toCall’s appeal of a final written decision cancelling certain 

claims of the ’836 patent, the reviewability of the Board’s 

§ 315(b) determination is now back before us on remand 

from the Supreme Court. Click-to-Call Techs., LP v. 

Oracle Corp., 136 S. Ct. 2508 (2016).

Under binding precedent of this court, we may not review that determination. In Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015), 

this court held that 35 U.S.C. § 314(d) precludes judicial 

review, even in an appeal of a final written decision 

cancelling patent claims in an IPR, of the PTO’s determination that institution of the IPR comports with the oneyear rule of § 315(b). Achates remains binding. Whatever 

effect the Supreme Court’s decision in Cuozzo Speed 

Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), would 

have on a fresh analysis of the Achates issue, a high 

standard must be met in order for one panel to conclude 

that an earlier, otherwise-binding panel decision has been 

superseded by an intervening Supreme Court decision. 

As this court held in Wi-Fi One, LLC v. Broadcom Corp., 

837 F.3d 1329 (Fed. Cir. 2016), the decision in Cuozzo

does not meet that standard for the Achates issue. 

The en banc court, however, would not be bound by 

Achates and could consider the issue afresh in light of 

Cuozzo. It appears to me that en banc consideration is 

warranted. I elaborate on my current thinking to complement Judge O’Malley’s analysis in her concurrence.

The specific issue is whether, in a patent owner’s appeal of a final written decision cancelling some claims of 

its patent, § 314(d) prohibits this court from reviewing the 

PTO’s determination that the petition satisfies § 315(b)’s 
CLICK-TO-CALL TECHS., LP v. ORACLE CORP. 3

timeliness rule.1 The reviewability provision, § 314(d), 

states: “The determination by the Director whether to 

institute an inter partes review under this section shall be 

final and nonappealable.” The timeliness provision, 

§ 315(b), states: “An inter partes review may not be 

instituted if the petition requesting the proceeding is filed 

more than 1 year after the date on which the petitioner, 

real party in interest, or privy of the petitioner is served 

with a complaint alleging infringement of the patent.”

As Cuozzo confirms, the question of reviewability 

must be answered against the background of an important default rule providing for judicial review of agencies’ affirmative exercises of power concretely harming the 

person seeking review. 136 S. Ct. at 2140. Under that 

rule, a high standard of clarity must be met before a court 

may conclude that Congress has barred judicial review of 

determinations underlying such agency exercises of power 

even after the agency action has become final. Mach 

Mining, LLC v. Equal Emp’t Opportunity Comm’n, 135 S. 

Ct. 1645, 1651 (2015); Bowen v. Mich. Acad. of Family 

Physicians, 476 U.S. 667, 670–72 (1986). Where that 

 

1 We may consider the issue of § 314(d)’s meaning 

solely as to Board decisions to institute, putting aside 

Board decisions not to institute. In Cuozzo, as an important part of its rationale for reading § 314(d) to bar 

review even after a final written decision, the Supreme 

Court declared: “[T]he agency’s decision to deny a petition 

is a matter committed to the Patent Office’s discretion. 

See [5 U.S.C.] § 701(a)(2); 35 U.S.C. § 314(a) (no mandate 

to institute review).” 136 S. Ct. at 2140 (emphasis added). 

As to noninstitution decisions, the Court explained, 

§ 314(d) “would seem superfluous.” Id. Under that reasoning, § 314(d) need not be invoked to conclude that a 

denial of a petition is unreviewable; the provision’s interpretation seems to matter only as to decisions to institute. 
4 CLICK-TO-CALL TECHS., LP v. ORACLE CORP. 

standard is not met, the background reviewability rule 

supplies the rule of decision, confirming reviewability. 

And like other important structural background rules, 

such as those concerning extraterritoriality and sovereign 

immunity, the rule of decision favoring reviewability 

(where a clear contrary showing is not made) should apply 

in determining the scope of any statutory provision asserted to create an exception, not just in determining 

whether the provision is an exception at all. See Morrison 

v. Nat’l Austl. Bank Ltd., 561 U.S. 247, 265 (2010) (extraterritoriality); Microsoft Corp. v. AT&T Corp., 550 U.S. 

437, 455–56 (2007) (extraterritoriality); Sossamon v. 

Texas, 563 U.S. 277, 285 (2011) (sovereign immunity); 

Lane v. Pena, 518 U.S. 187, 192 (1996) (sovereign immunity); Pennhurst State Sch. & Hosp. v. Halderman, 465 

U.S. 89, 99 (1984) (sovereign immunity).

Within that framework, the Supreme Court in Cuozzo

made two things clear, while leaving others less clear. 

The first clear ruling is that § 314(d) bars review of certain institution determinations even after the Board has 

rendered a final written decision cancelling patent claims. 

The provision does not bar only interlocutory review, 

which, the Court explained, would already be rendered 

unavailable by the Administrative Procedure Act, 5 

U.S.C. § 704. See 136 S. Ct. at 2140. The second clear 

ruling is that the specific PTO determination involved in 

the Cuozzo case is within the § 314(d) bar. The PTO’s

determination in Cuozzo was that the petition seeking 

institution of an IPR complied with § 312(a)(3), which 

imposes a pleading requirement—that the petition must 

identify, “in writing and with particularity, each claim 

challenged, [and] the grounds on which the challenge to 

each claim is based.” 35 U.S.C. § 312(a)(3). Beyond that, 

however, the Court in Cuozzo left the scope of § 314(d)’s 

bar less than clear.
CLICK-TO-CALL TECHS., LP v. ORACLE CORP. 5

It is notable, to begin with, that the Court pointedly 

avoided embracing the simplest and most review-barring 

reading of § 314(d)—namely, that it prohibits judicial 

review of any determination to institute an IPR. Instead, 

in ruling that § 314(d) bars review of a § 312(a)(3) determination, the Court both emphasized the particular PTO 

determination before it and gave various indications that 

any unreviewability conclusion depends on what particular PTO determination is at issue. 136 S. Ct. at 2139 

(referring to “this kind of legal question and little more”); 

id. at 2140 (referring to “minor statutory technicality”); 

id. at 2141 (distinguishing “questions that are closely tied 

to the application and interpretation of statutes related to 

the Patent Office’s decision to initiate inter partes review” 

from “constitutional questions,” “other less closely related 

statutes,” and “questions of interpretation that reach, in 

terms of scope and impact, well beyond” § 314); id. at

2141–42 (not barring review of an agency’s decision “to 

act outside its statutory limits by, for example, canceling 

a patent claim for ‘indefiniteness under § 112’ in inter 

partes review”); id. at 2142 (concluding that “§ 314(d) bars 

Cuozzo’s efforts to attack the Patent Office’s determination to institute inter partes review in this case” (emphasis added)). 

Such issue dependence has a foundation in the language of § 314(d), which refers to a “determination . . . 

whether to institute an IPR under this section” (emphasis 

added). As a textual matter, those words clearly encompass the “reasonable likelihood” determination specified 

in § 314(a), but they leave unclear to what extent they 

reach determinations of compliance with other statutory 

provisions bearing on institution. The interpretive task 

demands a wider focus, beyond the words of § 314(d) 

alone, as the Court’s analysis in Cuozzo itself shows. See 

Cuozzo, 136 S. Ct at 2141 (relying on “[t]he text of the ‘No 

Appeal’ provision, along with its place in the overall 
6 CLICK-TO-CALL TECHS., LP v. ORACLE CORP. 

statutory scheme, its role alongside the Administrative 

Procedure Act, the prior interpretation of similar patent 

statutes, and Congress’ purpose in crafting inter partes 

review”). 

When the focus is widened to view the IPR regime as 

a whole, and how it compares to other aspects of the 

patent statute, one of the features that stands out is this: 

A statutorily proper petitioner—one entitled to file the 

petition when filed—is an essential statutory requirement 

for the PTO to conduct an IPR. As part of an evident 

balancing of interests (private as well as institutional), 

Congress imposed this proper-petitioner requirement to 

limit the extent to which it was authorizing pursuit, 

through this mechanism, of “one important congressional 

objective, namely, giving the Patent Office significant 

power to revisit and revise earlier patent grants.” Cuozzo, 

136 S. Ct. at 2139–40. 

Thus, whereas the PTO may unilaterally institute an 

ex parte reexamination, it may not unilaterally institute 

an IPR. Compare 35 U.S.C. § 303(a) (providing, for reexaminations, that “[o]n his own initiative, and at any time, 

the Director may determine whether a substantial new 

question of patentability is raised by patents and publications discovered by him or cited under the provisions of 

section 301 or 302”), with 35 U.S.C § 314(a) (providing, for 

IPRs, that “[t]he Director may not authorize an inter 

partes review to be instituted unless the Director determines that the information presented in the petition filed 

under section 311 and any response filed under section 

313 shows that there is a reasonable likelihood that the 

petitioner would prevail with respect to at least 1 of the 

claims challenged in the petition”). In this fundamental 

way, Congress confined this particular avenue for PTO 

reconsideration of issued patents to properly oppositional 

proceedings. See, e.g., In re Magnum Oil Tools Int’l, Ltd., 

829 F.3d 1364, 1381 (Fed. Cir. 2016); Genzyme Therapeu-
CLICK-TO-CALL TECHS., LP v. ORACLE CORP. 7

tic Prods. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 

1360, 1367 (Fed. Cir. 2016). And the opposition may not 

come from just anyone for an IPR. In § 315(b), Congress 

barred institution when the petition is filed by someone 

who has waited too long (based on earlier litigation). 

This seemingly fundamental structural aspect of the 

IPR scheme is reflected in PTO regulations. Those regulations treat compliance with the timing rule for IPRs as a 

matter of Board “jurisdiction.” 37 C.F.R. § 42.3(b) (in 

section headed “Jurisdiction,” providing that “[a] petition 

to institute a trial must be filed with the Board consistent 

with any time period required by statute”); see also 37 

C.F.R. § 42.104(a) (discussing “standing” of an IPR petitioner).2

 The “jurisdiction” label, while a troublesome one 

in many contexts, here relates to an Administrative 

Procedure Act principle that the Court in Cuozzo invoked 

in stating that, at least sometimes and maybe generally, 

§ 314(d) does not bar review to determine if agency action 

is “‘in excess of statutory jurisdiction.’” 136 S. Ct. at 2142 

(quoting 5 U.S.C. § 706(2)(C)). Notably, while the PTO by 

regulation treats the timing requirement at issue here as 

a matter of “jurisdiction,” Cuozzo confirms that the plead-

 

2 The jurisdictional character of the § 315(b) timing 

requirement is not altered by the possibility, as at least 

one panel of the Board has concluded, that a petitioner 

may correct its identification of a real party in interest, 

required by § 312(a)(2), without losing its filing date. 

Elekta, Inc. v. Varian Medical Sys. Inc., IPR2015-01401, 

2015 WL 9898990, at *4, *6 (PTAB Dec. 31, 2015). In the 

federal courts, jurisdictional facts remain jurisdictional 

even though a plaintiff may correct a defective pleading of 

such facts, with relation back to the time of initial filing, 

if the newly pleaded facts were true at the time of initial 

filing. See 28 U.S.C. § 1653; Newman-Green, Inc. v. 

Alfonzo-Larrain, 490 U.S. 826, 830–31 (1989).
8 CLICK-TO-CALL TECHS., LP v. ORACLE CORP. 

ing requirement, § 312(a)(3), at issue in that case cannot 

be characterized as “jurisdictional.” 

The “jurisdiction” language of Cuozzo is not the only 

basis for distinguishing the § 315(b) timing issue from the 

§ 312(a)(3) particularity issue addressed in Cuozzo. The 

two issues differ with respect to other, related aspects of 

Cuozzo’s reasoning as well: 

First, the requirement of a statutorily proper petitioner, including its timing aspect, is unrelated to the substance of the allegations of unpatentability. The 

interpretive issues for § 315(b), unlike those for 

§ 312(a)(3)’s pleading rule, are wholly distinct from the 

patentability issues decided in assessing under § 314(a) 

whether the substantive challenges are likely meritorious. 

A § 315(d) challenge, unlike a § 312(a)(3) challenge, is not 

“little more than a challenge to the Patent Office’s conclusion, under § 314(a), that the ‘information presented in 

the petition’ warranted review.” Cuozzo, 136 S. Ct. at 

2142. A § 315(b) determination is not like “the kind of 

initial determination at issue [in Cuozzo]—that there is a 

‘reasonable likelihood’ that the claims are unpatentable 

on the grounds asserted.” Id. at 2140. 

Second, the § 315(b) timing determination is unlike

various preliminary determinations that “in other contexts, [the Court has] held to be unreviewable,” id.—

determinations focused on the substance of the allegations that will be at issue in the proceeding once initiated. 

The Court in Cuozzo pointed to the unreviewability of a 

grand jury’s finding of probable cause. Id. (citing Kaley v. 

United States, 134 S. Ct. 1090, 1097–98 (2014)). Another 

example, not cited in Cuozzo, is the denial of summary 

judgment, which is also a preliminary determination 

focused on the merits of the case and which is generally 

unreviewable after a final judgment. See Ortiz v. Jordan, 

562 U.S. 180, 183–84 (2011); Switz. Cheese Ass’n, Inc. v. 

E. Horne’s Market, Inc., 385 U.S. 23, 25 (1966); Function 
CLICK-TO-CALL TECHS., LP v. ORACLE CORP. 9

Media, L.L.C. v. Google Inc., 708 F.3d 1310, 1322 (Fed. 

Cir. 2013). In those situations, the merits in dispute at 

the summary judgment and grand jury stages will be 

finally and more fully resolved during subsequent proceedings, whose results will be subject to review as part of 

the final judgment; and at that point, the earlier, threshold assessments—e.g., whether there was probable cause 

presented to the grand jury or whether there was a genuine issue of material fact—are no longer pertinent. Much 

the same can be said, in the IPR context, of a determination of whether the challenged claims are likely unpatentable and whether related pleading requirements 

are satisfied. By contrast, under Achates, the Board’s 

timeliness decision, which is akin to a decision on standing, will never be reviewed, even though it is not effectively mooted by the final decision.

Third, for the same reason, the § 315(b) determination 

is unlike the determinations made unreviewable by the 

statutory provisions on which § 314(d) was based, namely, 

§ 303(c) for ex parte reexamination and old § 312(c) for 

inter partes reexamination. See Cuozzo, 136 S. Ct. at 

2140 (noting § 314(d)’s relationship to § 303(c) and old 

§ 312(c)). What those provisions barred was review of 

determinations interwoven with the substance of the 

patentability issue. See 35 U.S.C. § 303(c) (“A determination by the Director pursuant to subsection (a) of this 

section that no substantial new question has been raised 

will be final and nonappealable.”); 35 U.S.C. § 312(c) 

(2011). The § 315(b) determination is different.

Fourth, as noted supra, the proper-party requirement 

is a clear structural limit (even a “jurisdictional” limit) on 

the authorization the PTO received from Congress to 

cancel bad patent claims through this scheme. In that 

respect it is akin to the provision limiting IPRs to only 

(certain) § 102 and § 103 challenges—which is a limit 

Cuozzo indicates remains enforceable by judicial review, 
10 CLICK-TO-CALL TECHS., LP v. ORACLE CORP. 

Cuozzo, 136 S. Ct. at 2141–42. And it is not a “minor 

statutory technicality” (like § 312(a)(3)’s “pleading” rule) 

that Congress could not have expected to curtail the 

PTO’s use of IPRs to correct bad patents. Id. at 2140.

The foregoing considerations are only part of the inquiry into how Cuozzo applies to the § 315(b) timeliness 

requirement. Cuozzo also uses language that, at least 

when taken alone, can be read as pointing toward broad 

unreviewability conclusions. Id. at 2139 (“[T]he legal 

dispute at issue is an ordinary dispute about the application of certain relevant patent statutes concerning the 

Patent Office’s decision to institute inter partes review.”); 

id. at 2141 (“[O]ur interpretation applies where the 

grounds for attacking the decision to institute inter partes 

review consist of questions that are closely tied to the 

application and interpretation of statutes related to the 

Patent Office’s decision to initiate inter partes review.”); 

id. at 2142 (“[W]here a patent holder grounds its claim in 

a statute closely related to that decision to institute inter 

partes review, § 314(d) bars judicial review.”). The proper 

reach of that language, however, is itself unclear.

Some of that language contains terms that on their 

face are limiting and call for further inquiry to identify 

their limits: “certain relevant patent statutes”; “closely 

related to that decision,” referring to the just-mentioned 

decision of § 314(a) that the claims are likely unpatentable. Id. at 2139, 2142 (emphases added). And even the 

broadest statement—“our interpretation applies . . .”—

cannot be read in isolation from Cuozzo’s preservation of 

judicial review to prevent the PTO from acting “‘in excess 

of statutory jurisdiction’” by, e.g., enforcing certain statutory constraints on IPRs, such as § 311(b)’s restriction of 

IPRs to certain grounds under § 102 and § 103. Id. at 

2141–42. After all, § 311(b)’s limitation of IPRs to certain 

prior-art bases is certainly a “statute[ ] related to the 

Patent Office’s decision to initiate inter partes review.” 
CLICK-TO-CALL TECHS., LP v. ORACLE CORP. 11

Id. at 2141. Yet Cuozzo confirms the judicial enforceability of that limitation. 

It is not self-evident what to make of the mix of language in Cuozzo for purposes of determining the reviewability of PTO rulings on grounds, such as timeliness under 

§ 315(b), other than the one before the Court in Cuozzo. 

The Supreme Court could easily have written its opinion 

more broadly. Instead, it took evident pains to speak in 

terms that left a good deal open. And then, rather than 

conclude that Cuozzo so clearly implies unreviewability of 

§ 315(b) determinations that the Court should simply 

deny the petition for certiorari in the present case, the 

Court granted certiorari, vacated our judgment finding 

unreviewability, and remanded the case for further consideration. Click-to-Call Techs., 136 S. Ct. at 2508.

I have set out some reasons for concluding that the 

background rule of reviewability should govern as to the 

timing requirement of § 315(b) because there is no clear 

enough basis for concluding otherwise. There may be 

additional reasons. For example, it might be relevant 

that the § 315(b) determination, which may depend on 

real-party-in-interest and privity relationships, is not 

always made definitively at the institution stage: discovery into pertinent facts and definitive resolution of the 

issue may occur after institution (which is not true for 

“likely success” or, seemingly, § 312(a)(3) pleading determinations). On the other hand, perhaps a full analysis 

would ultimately establish the required clear case for 

overcoming the default rule of reviewability even as to the 

§ 315(b) issue. 

The § 315(b) issue is a recurring one. Moreover, the 

principle of presumed judicial review for agency action 

that harms private persons is an important one. At 

present, it appears to me that Achates is incorrect and 

that en banc review is warranted.