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Kunin: Arthrex & Click-To-Call Highlight Patent Law Cases in 2020

Maier & Maier

As 2020 comes to a close, leading IP experts are taking stock of the year that was and its effect on U.S. patent law. Among these expert opinions is Maier & Maier’s own Steve Kunin, who commented on two of the most significant patent cases this year in Arthrex, Inc. v. Smith & Nephew, Inc. and Thryv v. Click-to-Call.

Thryv v. Click-to-Call, 140 S. Ct. 1367 (April 20, 2020)

“The Supreme Court held that a PTAB determination of whether an IPR petition is timely under 35 U.S.C. § 315(b) cannot be judicially reviewed. The Court, in the majority opinion by Justice Ginsburg, held that § 315(b) time bar determinations are not appealable, vacated, and remanded with instructions for the Federal Circuit to dismiss for lack of jurisdiction. This decision reinforced the Congressional intent to provide the USPTO with broad discretion in making AIA trial institution decisions.”

Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), reh’g denied, 953 F.3d 760 (March 23, 2020

“The Federal Circuit held that USPTO APJs were unconstitutionally appointed under the Appointments Clause. The judges are not “inferior officers” and should have been appointed by the President and confirmed by the Senate. The Court then “fixed” the problem by stripping out the civil servant protections set forth in 5 U.S.C. that prevented the judges from being fired without cause. The case is now before the Supreme Court on certiorari. If the Federal Circuit’s decision is not reversed it will require Congress to enact legislation to correct the problem. The U.S. Government’s position is predicated on the finding that APJs are inferior officers that have been duly appointed.”

As Arthrex is pending before the Supreme court, it may be one of the most influential in 2021 as well. For more commentary on the year in review, see the full article here.

PTAB Discretionary Denial On The Rise

Timothy Maier

The timing considerations that go into filing a petition for inter partes review with the PTAB have become progressively more difficult to navigate as the PTAB exercises increased discretion in rejecting IPRs. This trend started with the precedential NHK decision in which the PTAB rejected an IPR petition on the basis of an upcoming district court trial. Since then, the Federal Circuit has continued to provide the PTAB with increased autonomy by expanding its discretion to institute IPR under 314(a).

Likewise, in the Thryv decision the Supreme Court all but cut off any review of institution by the Federal Circuit, and in the SAS decision, the Supreme Court determined that all PTAB decisions on whether to institute IPR have to be binary, either instituting on all grounds or denying IPR altogether. Following SAS, the PTAB also started to deny institution of IPR where there is a reasonable likelihood that the petitioner will prevail on only a minority of the proposed grounds for unpatentability. For example, in Biofrontera v. DUSA Pharms the PTAB exercised its discretion to deny institution where the petitioner only showed a reasonable likelihood of success on only 1 of 8 grounds.

Since the NHK decision, many patent owners have raised NHK in an attempt to thwart institution of IPR as redundant to invalidity defenses raised in district court proceedings. Approximately 33 patent owner preliminary responses have raised NHK in similar circumstances since December 2018, with 20 of those cases being decided in Jan to May of 2020 alone. Below is a chart detailing the 10 cases where IPR institution has been denied on the basis of an NHI argument, consolidated into a single entry where multiple IPR denials related to the same parallel district court case.

Table 1: IPR denied based on NHK

Decision Date Case Name* Materially different prior-art arguments raised in the IPR petition(s)? Months until district court trial after the IPR institution decision**
12/3/2018 Mylan v. Bylar No 4
10/16/2019 Next caller v. Trustid No 9
1/22/2020 Magellan v. Sunoco No 2
3/10/2020 Bentley v. Jaguar Yes 7
3/26/2020 Ford v. MIT No 0 (finished, under appeal)
3/27/2020 Google v. UNILOC No 5
5/13/2020 Apple v. FINTIV No 10
5/15/2020 Cisco v. Ramot at Tel Aviv No 6
5/19/2020 Intel v. VLSI No 5-7, estimated


The most recent of these cases is perhaps one of the most favorable to the patent owner. In a series of decisions captioned Intel v. VLSI, the PTAB relied on NHK to deny review under 314(a) even though the District court has suspended its trial schedule due to Covid-19. Significantly, petitioner Intel filed its IPR petitions fully three months prior to the one-year statutory deadline after service of the district court complaint. Acknowledging these facts, the PTAB focused on the significant investment that had already gone into the parallel district court case, with fact discovery scheduled to end in May. Additionally, the trial date was set for October 2020, with a final written decision from the PTAB likely not to come until May 2021 if IPR were instituted. Even with the district court currently closed due to Covid-19, the PTAB found that it is likely the district court will go to trial before a final decision is reached. In weighing all the factors set forth in NHK, the PTAB ultimately decided that the likelihood of a district court trial in 5 to 7 months warranted denial of review.

The cases identified above are just the first in a series of PTAB developments favoring patent owners. With the ever-evolving landscape of IPR litigation it has become even more important than ever that parties looking to petition for IPR have capable and knowledgeable counsel who are able to navigate the unwritten rules of discretionary denial of IPRs.

Supreme Court: PTAB’s Institution of IPR Over Time-Bar Unappealable

Timothy Maier

In their decision in Thryv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court ruled that the PTAB’s decisions on 35 U.S.C. § 315(b), the one year time-bar, are final and unappealable.

The case began in 2013 at the PTAB with Thryv, Inc. (“Thryv”) and Click-to-Call Technologies, LP (“Click-to-Call”). Thryv filed a petition for an IPR of Click-to-Call’s patent relating to anonymous telephone calling (U.S. Pat. No. 5,818,836). In response, Click-to-Call argued that Thryv was time-barred from bringing this petition because of a complaint from 2001. The PTAB disagreed with Thryv’s argument due to procedural distinctions between the 2001 complaint and usual complaints leading to the time-bar. Therefore, the PTAB instituted the IPR over Click-to-Call’s objections.

Over the course of a series of appeals, the question of whether the Federal Circuit had jurisdiction to hear this appeal was brought to the Federal Circuit in an en banc review. Under §314(d), the PTAB’s institution decision is final and unappealable. However, the Federal Circuit found that §314(d) did not include the time-bar in §315(b). Instead, the Federal Circuit explained that §314(d) was limited to the likelihood-of-success requirement for proposed grounds of rejection stated in §314(a).

The Supreme Court disagreed in a 7-2 vote. The opinion was authored by Justice Ginsburg and joined by Roberts, Breyer, Kagan, and Kavanaugh, and in part by Alito and Thomas. The Court held that §314(d) covered not just the likelihood of success in §314(a), but the institution decision as a whole. At the heart of the opinion was the desire for efficiency in the court system. Per the opinion,

“By providing for inter partes review, Congress, concerned about overpatenting and its diminishment of competition, sought to weed out bad patent claims efficiently…Allowing §315(b) appeals would tug against that objective, wasting the resources spent resolving patentability and leaving bad patents enforceable.”

The dissent, authored by Justice Gorsuch and Joined by Sotomayor, emphasizes the fact that the phrase “in this section” in §314(d) limits the finality and unappealability solely to §314. As Justice Gorsuch puts forth, the justification for including the time-bar of §315(b) under the scope of §314(d) “appears nowhere in the statute but is, instead, a product of the judicial imagination”.

The full opinion is available here and will have significant impact on the procedures of the PTAB for patent owners, petitioners, and practitioners alike.