       NOTE: This disposition is nonprecedential.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, Spo-
kane, WA.

    MARK D. FOWLER, DLA Piper US LLP, East Palo Alto,
CA, for appellees Oracle Corporation, Oracle OTC Subsid-
iary, 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 alleg-
ing 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 determi-
nation 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 determi-
nation 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 jurisdic-
tional 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 re-
view . . . .”).
    Oracle Corp. (“Oracle”) and the United States Patent
and Trademark Office (“PTO”) both argue that the Su-
preme Court’s analysis in Cuozzo not only did not over-
rule 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 Jus-
tice 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 com-
plains that “the petition’s timeliness, no less than the
particularity of its allegations, is closely tied to the appli-
cation 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 there-
fore once more dismiss CTC’s appeal for lack of jurisdic-
tion. 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 hold-
ing 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 proceed-
ing 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 defi-
niteness under § 112 during an IPR proceeding despite
Congress only authorizing the Board to consider challeng-
es 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 Adminis-
trative 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 Acha-
tes. 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 challeng-
ing 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 pro-
ceeding” 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 con-
text 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 author-
ized 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 institut-
ing 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 read-
ing 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 proceed-
ings—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 institu-
tion 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 over-
come 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. Nutri-
tion 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 particulari-
ty’ under § 312 is little more than a challenge to the
Patent Office’s conclusion, under § 314(a), that the ‘infor-
mation 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 petition-
er . . . 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 ex-
pressly 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 unre-
viewable 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, insti-
tuted 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-to-
Call’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 re-
view that determination. In Achates Reference Publish-
ing, 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 determi-
nation that institution of the IPR comports with the one-
year 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 com-
plement Judge O’Malley’s analysis in her concurrence.
     The specific issue is whether, in a patent owner’s ap-
peal 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 im-
portant default rule providing for judicial review of agen-
cies’ 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 im-
portant 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 rea-
soning, § 314(d) need not be invoked to conclude that a
denial of a petition is unreviewable; the provision’s inter-
pretation 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 as-
serted 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) (extra-
territoriality); 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 immun-
ity); 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 cer-
tain 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) deter-
mination, the Court both emphasized the particular PTO
determination before it and gave various indications that
any unreviewability conclusion depends on what particu-
lar 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 determina-
tion to institute inter partes review in this case” (empha-
sis added)).
    Such issue dependence has a foundation in the lan-
guage 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 encom-
pass 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 reex-
aminations, 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 publica-
tions 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 deter-
mines 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 regu-
lations 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 peti-
tioner). 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 petition-
er, including its timing aspect, is unrelated to the sub-
stance 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 conclu-
sion, 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 con-
texts, [the Court has] held to be unreviewable,” id.—
determinations focused on the substance of the allega-
tions 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 pro-
ceedings, whose results will be subject to review as part of
the final judgment; and at that point, the earlier, thresh-
old assessments—e.g., whether there was probable cause
presented to the grand jury or whether there was a genu-
ine issue of material fact—are no longer pertinent. Much
the same can be said, in the IPR context, of a determina-
tion of whether the challenged claims are likely un-
patentable and whether related pleading requirements
are satisfied. By contrast, under Achates, the Board’s
timeliness decision, which is akin to a decision on stand-
ing, will never be reviewed, even though it is not effective-
ly 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 determina-
tion 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 in-
quiry 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 applica-
tion 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 unpatenta-
ble. 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 statu-
tory 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 enforceabil-
ity of that limitation.
     It is not self-evident what to make of the mix of lan-
guage in Cuozzo for purposes of determining the reviewa-
bility 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 con-
sideration. 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: discov-
ery 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 deter-
minations). 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.
