Thryv, Inc., fka Dex Media, Inc., v. Click-To-Call Technologies, LP (Supreme Court 2019)
Oral arguments are set for December 9, 2019 in this case that again questions the meaning of “nonappealable” in the AIA trial context.
The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.
35 U.S.C. 314(d).
The inter partes review (IPR) petition challenging Click-to-Call’s U.S. Patent 5,818,836 was filed by Ingenio who later became Dex Media and who is now known as Thryv. The PTAB instituted the petition and later found the claims unpatentable. On appeal, Federal Circuit sided with the patentee — holding (on rehearing) that the IPR should not have been instituted in the first place and thus vacating the final written decision. In particular, the court held that prior litigation on the patent triggered the 1-year time-bar of Section 315(b). The en banc majority also held that the “nonappealable” statutory language was not strong enough to bar appeals of situations like this – where Director’s decision to institute went outside of her statutory authority. In Cuozzo v. Lee (2015), the Supreme Court arguably authorized such review:
While the decision to institute inter partes review is “final and nonappealable” in the sense that a court cannot stop the proceeding from going forward, the question whether it was lawful to institute review will not escape judicial scrutiny. This approach is consistent with the normal rule that a party may challenge earlier agency rulings that are themselves “not directly reviewable” when seeking review of a final, appealable decision. 5 U. S. C. §704. And it strikes a sensible balance: The Patent Office may proceed unimpeded with the inter partes review process … but it will be held to account for its compliance with the law at the end of the day.
Cuozzo. Still, the Supreme Court granted certiorari in this case on the following single question:
1. Whether 35 U.8.C. § 314(d) permits appeal of the PTAB’s decision to institute an inter partes review upon finding that§ 315(b)’s time bar did not apply.
[Thryv Petition]. In its briefing, the Gov’t has provided a more neutral question:
Whether, in an appeal from the final written decision of the [PTAB] in an [IPR], the Federal Circuit is authorized to vacate the Board’s decision as to patentability on the ground that the review was improperly instituted because the petition was time-barred by 35 U.S.C. 315(b).
Merits Briefing is now ongoing with petitioner’s opening brief filed along with a Gov’t brief and amici supporting either (1) reversal or (2) neither party.
Although expected, the Gov’t brief is important. The Gov’t originally opposed certiorari and has now switched sides to support petitioner. That change was foreshadowed at the petition stage in the Gov’t brief:
Although the government agrees that the court of appeals lacked jurisdiction to consider Click-to-Call’s challenge to the institution determination in this case, the court’s contrary jurisdictional holding does not warrant further review.
[Gov’t Brief Opposing Certiorari]. The Gov’t explains its conclusion of no-appellate-authority as consistent with Cuozzo. In particular, Cuozzo explains that the no-appeal provision applies to questions “closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.” The Gov’t key authority on this front is the dissent filed by Justice Alito in Cuozzo itself. Alito particularly argued that limitations in the Cuozzo majority opinion would leave the courts “powerless” to curb abuses by the PTO, including improper policing of the 315(b) time bar. [Gov’t Brief on the Merits].
Petitioner Merits Brief substantially parallels the brief of the Gov’t, although going a bit further by arguing that the no-appeal provision was designed to ensure that a patentee could not save its patent on a technicality not related to patentability.
This is critical, because overturning an IPR decision based on tangential, non-merits grounds decided at the institution stage would permit the patent owner to continue to enforce an invalid patent, thereby substantially harming the public interest.
So far, eight amici briefs have been filed:
- Supporting neither party: Federal Circuit Bar Association. (arguing that initiating a petition in violation of the time-bar is an “ultra vires” agency action appealable even when appeals are barred by statute).
- Supporting neither party: PTAB Bar Association. (this brief essentially requests that the Supreme Court write a careful opinion that considers its impact beyond the facts of this particular case).
- Supporting neither party: American Intellectual Property Law Association. (section 314(d) should not shield Board action that contravenes its statutory authority).
- Supporting petitioner: AARP. (quick and efficient IPR proceedings are saving lives by making drugs and biosimilars available at a lower cost).
- Supporting petitioner: Atlanta Gas Light Company. (“Providing greater opportunities for appellate review may increase accuracy, but at a cost to efficiency.”)
- Supporting petitioner: Intel Corporation. (decrease efficiency).
- Supporting petitioner: ON Semiconductor Corporation, et al. (the result here is to allow patentee to enforce invalid patents).
- Supporting petitioner: Superior Communications, Inc. (the only way this situation comes-up is where the patent has been found unpatentable on the merits but is seeking to escape judgment on a technicality).
Respondent’s brief and briefs in support will be filed over the next few weeks.