315(b) Jurisdictional Issues Can Still Be Waived if not Raised at the Board

In Acoustic Technology v. Itron Networked Solutions, the Federal Circuit was faced with a situation in which the Petitioner’s real party-in-interest/privy changed after institution, although the change was in the works before institution. After the change, the Petitioner was time barred from bringing an IPR.

Although the change in Petitioner parties was known during the trial, the Patent Owner failed to raise the time bar until appeal, arguing that the challenge was jurisdictional and could be brought at any time.

The Federal Circuit disagreed. Ruling only on the procedural aspects, and not the merits, the Court found the challenge was waived. Agreeing that some jurisdictional issues cannot be waived, the Court found that the patent owner was required to raise this specific argument at the PTAB for consideration by the Board. The Court found it unfair to sandbag the Petitioner at the appeal stage, and that the Federal Circuit was the wrong forum to first consider and decide the issue.

The critical issues were that “application of waiver differs between challenges to an agency’s ‘jurisdiction’ and challenges to a federal court’s jurisdiction.” Here, agency jurisdiction was at issue, so waiver applied.