Timothy Maier

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

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.

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