Divided Arguments Set for Click-To-Call

Thryv v. Click-To-Call is set for oral arguments before the Supreme Court on December 9, 2019 on the question of:

Whether 35 U.S.C. § 314(d) permits appeal of the PTAB’s decision to institute an IPR upon finding that 35 U.S.C. § 315(b)’s time bar did not apply.

Petition.  Section 315(b) sets out a one-year time-bar for filing an IPR petition:

(b) Patent Owner’s Action.— An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.

35 U.S.C. § 315(b).  The time-bar limits PTO discretion in instituting IPR proceedings.  However, Section 314(d) places a big caveat — making the decision of whether to institute “final and nonappealable.”

(d) No Appeal.—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).  Thus, the question before the Supreme Court is the extent of the no-appeal rule.   The Federal Circuit has allowed appeals in this (and parallel cases) and has also given an expansive interpretation to 1-year time bar.

At oral arguments Petitioner Thryv  (who is looking to invalidate the patent) will get 15 minutes as will the Federal Government who also argues that nonappealable means no appeal.  “[T]he Board’s institution decision, including its application of Section 315(b), [is] unreviewable.” Gov’t brief.  The patentee Click-To-Call will have 30 minutes in response.

In its request for divided argument, the Government lays out a distinction of interests between itself and of Thryv:

Although petitioner and the federal respondent have both filed briefs urging reversal of the Federal Circuit’s judgment, the two parties have distinct perspectives on the question presented in this case. Click-to-Call has alleged that petitioner’s predecessor in interest Ingenio, Inc. infringed the patent subject to the inter partes review in this case. Petitioner thus has a direct financial interest in the Board’s decision finding certain claims in that patent to be unpatentable. The federal respondent has a broader institutional interest in the scope of judicial review of the Board’s institution decisions and the proper operation of the inter partes review scheme. The USPTO’s distinct institutional interest is reflected in Congress’s affording the USPTO the right to intervene in any appeal from a decision by the Board in an inter partes review, 35 U.S.C. 143 — a right that the USPTO exercised in this case. The government thus believes that participation by both petitioner and the federal respondent in the oral argument in this case would be of material assistance to the Court.

[Motion for Divided Argument]

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Claim 1 of U.S. Patent 5,818,836:

1. A method for creating a voice connection over a circuit switched network between a first party and a second party using an on-line data service to initiate the connection, comprising the steps of:

a) establishing an electronic communication between the first party and the second party through the on-line data service between a first party and a second party;

b) requesting a voice communication through the on-line service;

c) transmitting a message from the online data service to a voice system requesting the voice connection between said first party and said second party;

c) establishing a first telephone call for the first party;

d) establishing a second telephone call for the second party; and,

e) connecting said first telephone call with said second telephone call.

8 thoughts on “Divided Arguments Set for Click-To-Call

  1. 2

    Does the Government plan to argue why the facts of this case do not fit within the exceptions suggested by the Sup. Ct. in Cuzzo v. Lee in 2016 to the no appeal of IPR institutions statute 35 U.S.C. § 314(d)?


          Thanks dcl and anon. The Government is clearly arguing that the facts of this case – deciding the scope of the one year IPR bar – do not fit under any Cuozzo indicated exceptions to IPR initiation non-appealability. I would guess those opposing that position would need to argue that this is a statutory interpretation issue of general admininstative law interest, or an unreasonable interpretation contrary to the APA?

  2. 1

    The Trump DOJ is pushing for expansion of the Administrative State. The USPTO is for sale in 2020 to the highest bidder.

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