The opinion
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
UNWIRED PLANET, LLC,
Appellant
v.
GOOGLE INC.,
Appellee
______________________
2015-1812
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. CBM2014-
00006.
______________________
ON PETITION FOR REHEARING EN BANC
______________________
Before PROST, Chief Judge, NEWMAN, PLAGER*,
LOURIE, DYK, MOORE, O’MALLEY, REYNA, WALLACH,
TARANTO, CHEN, HUGHES, and STOLL, Circuit Judges.
PER CURIAM.
HUGHES, Circuit Judge, concurring in the denial of
the petition for panel rehearing.
___________________________________
* Circuit Judge Plager participated only in the de-
cision on the petition for panel rehearing.
2 UNWIRED PLANET, LLC v. GOOGLE INC.
ORDER
Appellee Google Inc. filed a petition for rehearing en
banc. A response to the petition was invited by the court
and filed by Appellant Unwired Planet, LLC. The petition
was first referred as a petition for rehearing to the panel
that heard the appeal, and thereafter the petition for
rehearing en banc was referred to the circuit judges who
are in regular active service.
Upon consideration thereof,
IT IS ORDERED THAT:
(1) The petition for panel rehearing is denied.
(2) The petition for rehearing en banc is denied.
The mandate of the court will issue on April 11,
2017.
FOR THE COURT
April 4, 2017 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
United States Court of Appeals
for the Federal Circuit
______________________
UNWIRED PLANET, LLC,
Appellant
v.
GOOGLE INC.,
Appellee
______________________
2015-1812
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. CBM2014-
00006.
______________________
HUGHES, Circuit Judge, concurring in the denial of the
petition for panel rehearing.
For the reasons expressed in my dissent in Versata
Development Group, Inc. v. SAP America, Inc., 793 F.3d
1306, 1336–43 (Fed. Cir. 2015) (Hughes, J., concurring-in-
part and dissenting-in-part), I continue to believe that
Versata was incorrectly decided. I further believe that
Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131
(2016) confirms that our review of the Patent Trial and
Appeal Board’s decision should be limited to the ultimate
merits of the patent validity determination and should
not, with narrow exception, extend to any decisions relat-
ed to institution. Those exceptions may include the rare
circumstances where the agency acts unconstitutionally
or in complete disregard of the limits on its statutory
2 UNWIRED PLANET, LLC v. GOOGLE INC.
authority. See Cuozzo Speed Techs., 136 S. Ct. at 2141;
see also Versata, 793 F.3d at 1342 (Hughes, J., concurring-
in-part and dissenting-in-part) (“Even when a statute
clearly demonstrates Congress intended to bar judicial
review of agency action generally, courts have recognized
an ‘implicit and narrow’ exception for agency action that
plainly violates an unambiguous statutory mandate.”
(citations omitted)). An exception does not apply in
instances where the court disagrees with the agency’s
discretionary exercise of its explicit statutory authority.
As I pointed out in Versata, if an agency can be said to be
acting without statutory authority whenever this court
disagrees with the board’s decision on any of the statutes
related to institution, then the bar on judicial review is
essentially eviscerated and is morphed into a bar on
interlocutory review of the institution decision and noth-
ing more. 793 F.3d at 1340 (Hughes, J., concurring-in-
part and dissenting-in-part). And that, of course, cannot
be what Congress intended because such interlocutory
review would have been unavailable even without the
addition of 35 U.S.C. § 324(e).
That said, I concur in the denial of panel rehearing.
In Wi-Fi One, LLC v. Broadcom Corp., Case No. 15-1944,
the en banc court is set to revisit the scope of an analo-
gous bar on judicial review from inter partes proceedings
in light of the Supreme Court’s decision in Cuozzo. Our
decision there and any subsequent Supreme Court review
will likely affect the question of whether Versata is and
should remain good law. Thus, rehearing here is unnec-
essary.