by Dennis Crouch
The U.S. Supreme Court is set to hear oral arguments on Monday, December 9 in the pending IPR Appeal that is now captioned Thryv, Inc. v. Click-to-Call Technologies, LP (SCT Docket No. 18-916). The focus of the case is statutory declaration that the PTO Director’s decision of whether to institute an IPR is “final and nonappealable.” 35 U.S.C. § 314(d). This same issue – albeit slightly different context – was already addressed in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) and SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018).
Question Presented in Thryv: 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.
The section 315(b) time bar prohibits institution of a petition “filed more than 1 year after the date on which the petitioner … is served with a complaint alleging infringement of the patent.” Years ago (well before the 1-year date) the patentee Click-to-Call sued Thryv’s predecessor-in-interest for infringement and served the complaint as required under § 315(b). That lawsuit, however, was voluntarily dismissed without prejudice. When the defendant later filed its IPR petition, the PTAB found that the dismissal without prejudice effectively nullified the original lawsuit and, as such, did not raise the time-bar. The PTAB then invalidated the claims. On appeal, the Federal Circuit rejected PTAB’s approach — holding that the statute does not allow for any exception to the time-bar for cases dismissed without prejudice. In its petition to the Supreme Court, Thryv asked the court to review both whether (1) the issue is appealable; and (2) the time-bar still applies after a dismissal without prejudice. The Supreme Court granted certiorari, but only as to question 1 – whether the issue is appealable.
The U.S. Gov’t also support’s Thryv’s position — arguing that its institution decisions should not be subject to appeal. Expected at oral arguments:
- Adam Charnes (Kilpatrick Townsend) is representing the petitioner patent-challenger Thryv.
- Jonathan Ellis from the Solicitor General’s office is representing the U.S. Gov’t. and splitting time with Charnes.
- Daniel Geyser (Geyser PC) is representing the patentee Click-to-Call.
- Opening Brief: Petitioner
- Opening Brief: U.S. Gov’t.
- Responsive Brief: Respondent
- Reply Brief: Petitioner
- Reply Brief: U.S. Gov’t.
- Amicus: Federal Circuit Bar Ass’n.
- Amicus: AIPLA
- Amicus: PTAB Bar Ass’n.
- Amicus: Atlanta Gas Light Co.
- Amicus: Intel Corp.
- Amicus: ON Semiconductor Corp., et al.
- Amicus: Superior Communications, Inc.
- Amicus: AARP and AARP Found.
- Amicus: NYIPLA
- Amicus: PhRMA
- Amicus: BIO
- Amicus: Professor Stephen I. Vladeck
- Amicus: Professors of Patent and Administrative Law
- Amicus: Power Integrations, Inc.
For me, the most on-point text comes from the Supreme Court’s 2018 decision in SAS that discusses and applies the court’s prior decision in Cuozzo (2016):
At this point, only one final question remains to resolve. Even if the statute forbids his partial institution practice, the Director suggests we lack the power to say so. By way of support, he points to § 314(d) and our decision in Cuozzo. Section 314(d) says that the “determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” In Cuozzo, we held that this provision prevented courts from entertaining an argument that the Director erred in instituting an inter partes review of certain patent claims. The Director reads these authorities as foreclosing judicial review of any legal question bearing on the institution of inter partes review—including whether the statute permits his “partial institution” practice.
But this reading overreads both the statute and our precedent. As Cuozzo recognized, we begin with “the ‘strong presumption’ in favor of judicial review.” Id. To overcome that presumption, Cuozzo explained, this Court’s precedents require “clear and convincing indications” that Congress meant to foreclose review. Given the strength of this presumption and the statute’s text, Cuozzo concluded that § 314(d) precludes judicial review only of the Director’s “initial determination” under § 314(a) that “there is a ‘reasonable likelihood’ that the claims are unpatentable on the grounds asserted” and review is therefore justified. . . . In fact, Cuozzo proceeded to emphasize that § 314(d) does not “enable the agency to act outside its statutory limits.” If a party believes the Patent Office has engaged in “ ‘shenanigans’ ” by exceeding its statutory bounds, judicial review remains available consistent with the Administrative Procedure Act, which directs courts to set aside agency action “not in accordance with law” or “in excess of statutory jurisdiction, authority, or limitations.”
And that, of course, is exactly the sort of question we are called upon to decide today. SAS does not seek to challenge the Director’s conclusion that it showed a “reasonable likelihood” of success sufficient to warrant “institut [ing] an inter partes review.” 35 U.S.C. §§ 314(a), (d). No doubt SAS remains very pleased with the Director’s judgment on that score. Instead, SAS contends that the Director exceeded his statutory authority by limiting the review to fewer than all of the claims SAS challenged. And nothing in § 314(d) or Cuozzo withdraws our power to ensure that an inter partes review proceeds in accordance with the law’s demands.
SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). The difficulty here with directly applying SAS is (1) Gorsuch overstated the holding in Cuozzo regarding the “only” thing appealable; (2) SAS was decided in a 5-4 vote with dissenters characterizing Cuozzo has holding “that the Director’s decision whether to institute review is normally not reviewable.”