SCT: Procedural Rules Should Not Unwind the Power of IPR’s to Cancel Bad Patents

by Dennis Crouch

Thryv, Inc. v. Click-to-Call Tech (Supreme Court 2020)

In this case, the Supreme Court has sided with the PTO and Patent-Challengers — holding that the agency’s decision to hear an IPR challenge is not reviewable on appeal — even if the challenge is based upon the time-bar of §315(b).  According to the court, a ruling otherwise “unwind the agency’s merits decision” and “operate to save bad patent claims.”

Read the Decision Here:

The statutes authorizing inter partes review proceedings (IPRs) provides the USPTO Director with substantial latitude in determining whether or not to grant initiate an IPR. One limitation is that an IPR petition must be filed within 1-year of the petitioner (or privy) being served with a complaint fo infringing the patent. 35 U.S.C. §315(b).  The PTO cancelled Click-to-Call’s patent claims, but the Federal Circuit vacated that judgment after holding that the PTO should not have initated the IPR.  The issue on appeal was whether a lawsuit that had been dismissed without prejudice still counted under the §315(b) time-bar.  No, according to the PTO; Yes, according to the Federal Circuit.

A key problem with the Federal Circuit’s decision is the no-appeal provision also found in the statute:

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 Federal Circuit held that the time-bar issue should be seen as an exception to the statute, the Supreme Court though has rejected that analysis.

Cuozzo: This is the Supreme Court’s second venture into analysis of the time-bar.  In Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016), the court held that the no-appeal provision will preclude appellate review in cases “where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.”   Cuozzo expressly did not decide when you might find exceptions — “we need not, and do not, decide the precise effect of § 314(d) on appeals that implicate constitutional questions, that depend on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond ‘this section.'”

In Thryv, the Supreme Court found that Cuozzo governs the time-bar question — holding that the statutory time-bar is closely related to the institution decision:

Section 315(b)’s time limitation is integral to, indeed a condition on, institution. After all, §315(b) sets forth a circumstance in which “[a]n inter partes review may not be instituted.” Even Click-to-Call and the Court of Appeals recognize that §315(b) governs institution.

Majority Op.  “The appeal bar, we … reiterate, is not limited to the agency’s application of §314(a).” Id. at n.6.

In its decision, the Supreme Court also puts its thumb on the policy concerns of “overpatenting” and efficiently “weed[ing] out bad patent claims.”

Allowing §315(b) appeals would tug against that objective, wasting the resources spent resolving patentability and leaving bad patents enforceable. A successful §315(b) appeal would terminate in vacatur of the agency’s decision; in lieu of enabling judicial review of patentability, vacatur would unwind the agency’s merits decision. And because a patent owner would need to appeal on §315(b) untimeliness grounds only if she could not prevail on patentability, §315(b) appeals would operate to save bad patent claims. This case illustrates the dynamic. The agency held Click-to-Call’s patent claims invalid, and Click-to-Call does not contest that holding. It resists only the agency’s institution decision, mindful that if the institution decision is reversed, then the agency’s work will be undone and the canceled patent claims resurrected.

Majority Op. Section III.C

Justice Ginsburg delivered the opinion joined in fully by Chief Justice Roberts and Justices Breyer, Kagan, and Kavanaugh.  Justices Thomas and Alito joined with the decision except for the policy statements found in III.C.

Justice Gorsuch wrote in dissent and was substantially joined by Justice Sotomayor.  Justice Gorsuch was not yet on the court when Cuozzo was decided, and Justice Sotomayor joined Justice Alito’s dissent to that decision.  The basics of the dissent is that our Constitution does not permit a “politically guided agency” to revoke property rights without judicial review:

Today the Court takes a flawed premise—that the Constitution permits a politically guided agency to revoke an inventor’s property right in an issued patent—and bends it further, allowing the agency’s decision to stand immune from judicial review. Worse, the Court closes the courthouse not in a case where the patent owner is merely unhappy with the merits of the agency’s decision but where the owner claims the agency’s proceedings were unlawful from the start. Most remarkably, the Court denies judicial review even though the government now concedes that the patent owner is right and this entire exercise in property taking-by-bureaucracy was forbidden by law.

Id.  The majority reject’s the dissent’s call for patents-as-property:

The dissent acknowledges that “Congress authorized inter partes review to encourage further scrutiny of already issued patents.” Yet the dissent, despite the Court’s decision upholding the constitutionality of such review in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 584 U. S. ___ (2018), appears ultimately to urge that Congress lacks authority to permit second looks. Patents are property, the dissent several times repeats, and Congress has no prerogative to allow “property-taking-by-bureaucracy.” But see Oil States, 584 U. S., at ___ (slip op., at 7) (“patents are public franchises”). The second look Congress put in place is assigned to the very same bureaucracy that granted the patent in the first place. Why should that bureaucracy be trusted to give an honest count on first view, but a jaundiced one on second look?

Majority Op. at n.4.

In a portion of the dissent not signed by Justice Sotomayor, Justice Gorsuch laments that the majority decision “takes us further down the road of handing over judicial powers involving the disposition of individual rights to executive agency officials.”

So what if patents were, for centuries, regarded as a form of personal property that, like any other, could be taken only by a judgment of a court of law. So what if our separation of powers and history frown on unfettered executive power over individuals, their liberty, and their property. What the government gives, the government may take away—with or without the involvement of the independent Judiciary. Today, a majority compounds that error by abandoning a good part of what little judicial review even the AIA left behind.

Justice Gorsuch in Dissent – Part V.

Just try to imagine this Court treating other individual liberties or forms of private property this way. Major portions of this country were settled by homesteaders who moved west on the promise of land patents from the federal government. Much like an inventor seeking a patent for his invention, settlers seeking these governmental grants had to satisfy a number of conditions. But once a patent issued, the granted lands became the recipient’s private property, a vested right that could be withdrawn only in a court of law. No one thinks we would allow a bureaucracy in Washington to “cancel” a citizen’s right to his farm, and do so despite the government’s admission that it acted in violation of the very statute that gave it this supposed authority. For most of this Nation’s history it was thought an invention patent holder “holds a property in his invention by as good a title as the farmer holds his farm and flock.” Hovey v. Henry, 12 F. Cas. 603, 604 (No. 6,742) (CC Mass. 1846) (Woodbury, J., for the court). Yet now inventors hold nothing for long without executive grace. An issued patent becomes nothing more than a transfer slip from one agency window to another.


75 thoughts on “SCT: Procedural Rules Should Not Unwind the Power of IPR’s to Cancel Bad Patents

  1. 13

    99.99% of all US patents are completely and utterly worthless thanks to decisions like this one, special interests that have spent millions making US patents worthless, the USPTO who is more competent at invalidating the patents it issues than issuing valid patents, and the AIA that allegedly was supposed to strengthen the patent system but has utterly destroyed it forever. Anyone who seeks patent protection in the US today is an utter fool. They are wasting their time, talent, and treasure on a system that has failed them. The government and courts have handed over our patent system to the rest of the world on a silver platter. The US’s once great patent system is now a heaping, smoldering mound of ash that only academics and IP thieves can benefit from. Anyone who is considering a career in patent law today should apply their talents elsewhere.

    1. 13.1

      Welcome, you are obviously among friends here. Is it true that some patent attorneys still add themselves as a co-inventor when prosecuting a patent application?

      1. 13.1.1

        And here, I thought that my pal with the shifting historical pseudonyms had finally learned a lesson and stopped tr011ing people…

        You kind of give yourself away (again) there Shifty, with the attempt at tarring an entire practice through the actions of a very small minority of bad actors.

        Did you have some sort of flash back memory that prompted that comment? It’s been well over a decade and a half since I saw ANY ramblings to that unfortunate (and bad) practice. Most all attorneys have learned from that in their understanding of ethical duties and conflicts of interests.

        That being said, I WILL disagree with Peter’s ramblings here — but for a decidedly different reason.

        Peter’s mantra, while perhaps driven by genuine DISaffection caused by the nonsense of the Court (and the courts), as well as the work of the CAPTURED Congress in the AIA, likely reflects his chagrin and emotional state.

        But it is a P00R reflection of what actually should be done, as that type of “just give up” is exactly what the Efficient Infringers WANT people to do.

        Now is NOT the time to capitulate.
        Now is the time to persevere.

      2. 13.1.2

        My mistake, If you are the Peter Corcoran who enlisted in the Navy and rose to Commander and clerked for Rader and was an Assistant Examiner at the Patent Office, my apologies, sir. I enlisted, too.

  2. 12

    From a leading law firm case report:
    1. The Court “[did] not decide whether mandamus would be available in an ex­traordinary case.” Thryv, 590 U.S. at ___, slip op. at 8 n.4”

    1. 12.1

      Judge Dyk once asked in oral argument “what if the Office instituted an IPR that was filed ten years too late?” as a hypothetical of a possible “extraordinary” case that might justify the grant of a writ of mandamus. Coincidentally, depending on the (ultimately undecided) question of whether a dismissal without prejudice nullifies the effect of service of a “complaint alleging infringement,” in Click-to-Call the IPR was filed about ten years late _assuming_ the service was effective.

      The early writs to the Fed. Cir. from AIA proceedings were denied, in the main, because the threshold questions, if reviewable, could be reviewed upon appeal from the PTAB’s Final Written Decision. Dollars to doughnuts, challenged patentees will file yet more writs of mandamus. But it’s unlikely they will be granted for a number of reasons.

      1. 12.1.1

        Given the most recent decision, what is the theory that would support a writ of mandamus?

        (no snark)

  3. 11

    “Bad patents”, “over patenting”, “thickets”, “patents are a franchise” That’s all Justice Breyer. And his woeful “optimal society” is what the law if for thinking. It’s not a “rule of law” that much is certain. This comes to mind:

    “Equity is a roguish thing : for law we have a measure ; know what to trust to. Equity is according to the conscience of him that is Chancellor; and, as that is larger or narrower, so is equity. ‘Tis all one, as if they should make his foot the standard for the measure we call a foot ‘a Chancellor’s foot’; what an uncertain measure would this be! One Chancellor has a long foot. another a short foot, a third an indifferent foot; ’tis the same thing in the Chancellor’s conscience.

    At least Gorsuch is grasping the nettle – Oil States was wrongly decided. And the old SCOTUS land patent cases ARE directly on point – as I recall it was the Comstock load mineral rights ‘land patent’ that made it to SCOTUS. Needless to say a very valuable patent indeed – and therefore hotly contested – in every venue including political. In a nut shell, holding, we can’t have a system of rights grants, an election, a new political appointment land commissioner or in this case PTO commissioner, who revokes rights based upon ‘mistake’ or any other non-judicial review of the prior commissioner. Only the independent judiciary has such power under our structure of government. To hold otherwise interjects raw political power into the equation, something we don’t want, and the very thing the structure was put in place to prevent.

    To say Breyer is pollyannish about: Well if any agency grants why can’t it review the grant again and again? Or in other words, a “Caesar’s wife must be above suspicion” view of agency action. Just ignores reality that the people fighting over the thing (the patent) are fighting over a thing of VALUE. Obviously here wherein the statute creating the tribunal (the IPR panel) appoints the commissioner himself as the ‘judge’ demolishes this career public servant can’t be political point of view.

    Furthermore, to allow an agency to strip the judiciary of it’s power of finality, indeed it’s very power to adjudicate, rendering it merely advisory . . . well you need some true blue hate of the very concept of a patent in the first instance. That’s Hayburn’s case. Why you guys keep citing Marbury is to be missing this vital point. Indeed, taking the Oil States holding at face value, under Hayburn’s is to say the judiciary cannot have ANY jurisdiction over a patent dispute. That’s the next shoe to drop. Worst SCOTUS in 100 years, maybe even worse than the old 2nd circuit group of haters. Story? Marshall?

      1. 11.1.1

        “Caesar’s wife must be above suspicion”

        Well when you’re literally the censor (literally in charge of determining right from wrong aka morality, at least in public) for the nation/empire I would think so.

  4. 10

    >And because a patent owner would need to appeal on §315(b) untimeliness >grounds only if she could not prevail on patentability, §315(b) appeals would >operate to save bad patent claims.

    This is just incredible. This is essentially saying that procedure does not matter. This is the type of logic applied by totalitarian states. It is saying that laws don’t matter. What matters is that we think your claims are bad, so we will invalidate them in anyway we feel like it. At least we see the motives for Alice based on their feelings about patents.

    I would note that Ginsburg knows absolutely nothing about science or technology and somewhere on the internet is her talking about computers where she explains computers about at the level of a three-year old talking about worlds inside her computer not being real and somehow being similar to her imagination.

    Paul below states that a patentee can avoid this. I don’t know how. Paul seems to be one of those anti-patent judicial activists, which I guess we can clearly put seven of the nine in the same category.

    I don’t know where we go from here. The Scotus has declared war on patents. And we all know their only knowledge of any of this is from briefs filed by anti-patent groups.

  5. 9

    Well, you gotta suspect that something is bad wrong when Gorsuch and Sotomayor are on the same opinion….

  6. 7

    The problem here is that the 1790 Congress changed the meaning of the word “patent” from a privilege from the government to a property right based on merit. The 2011 Congress and 2018 Supreme Court changed the meaning of the term back to a privilege from the government, with little connection to the merit of the invention (i.e., the government can unilaterally amend the terms and conditions of the patent, fabricate their own meaning for the words in the patent, break the law by violating deadlines, illegally appoint Silicon Valley cronies to invalidate your patent, and then argue its all comports with the 5th Amendment because your patent is just privilege). Many in the legal industry continue to deceive inventors by marketing the 1790 version of U.S. patents, but it we are starting to catch on to the scam. The Supreme Court is making it very clear. It is time for the legal industry and the USPTO to start telling inventors the truth. Patents are not the right to exclude. Patents are not property rights. Patents are not secure. Patents are privileges that will most likely be revoked if you ever try to use them.

    1. 7.1

      You have to realize that the Scotus does this sort of thing all the time.

      The Scotus was convinced that the Sherman Antitrust Act had to eviscerated, so they figured out how to do that with the Rule of Reason.

      Similarly, the Scotus was convinced that patents had to be eviscerated, so they gave us Alice, eBay, KSR, and so forth.

      In each case, the Scotus was convinced that in order for US corporations to compete globally that these laws had to change but that Congress did not have the will to change them.

      The thing that is so irksome is that the Scotus acts as legislators, but denies it. It isn’t hard to eviscerate a law. You just put in there some balancing test that is supposed needed to preserve the Constitution and make it so the fact finder gets to perform the balancing test.

  7. 6

    What’s the import of this opinion with respect to whether cases that are voluntarily dismissed without prejudice start the 1 year time bar though?

      1. 6.1.1

        Nope, the decision is that this issue is no longer appealable to any Fed. Cir. panel.


          Looks like what Paul said is true.

          Basically this means if the PTO wants to ra pe you up the b utt and take your claims from you, they can and there is nothing you can do about it.


            I hope we can all start to dispense with antiquated notions of procedure from here on out. We have to DO SOMETHING about [these people].

            We can’t burden cops with mirandizing people anymore. Something HAS TO BE DONE about those criminals. Cops are in the best position to know if you committed a crime, do cha know?


              Personal feelings/philosophies
              A desired Ends
              Patents are bad
              The only valid patent is one that has not yet appeared before us

              We’ve been here before.

    1. 6.2

      Mike, that may depend on whether or not subsequent IPR panels follow their own decision re IPR bar date ambiguity that was upheld here by the Sup. Ct., or, if they might decide to follow the reversed Fed. Cir. decision as a matter of judicial courtesy and respect to their supervisory appellate court with a good argument to that effect? They now clearly have discretion for either which cannot be appealed.

      1. 6.2.1

        This is not entirely correct.

        From a purely technical standpoint, the Supreme Court vacated the panel decision on the “dismissal without prejudice” issue, so it is no longer precedent.

        But from a practical standpoint, it should not have any impact at all on how the PTAB treats this issue in future cases. I expect the PTAB to continue to follow the Federal Circuit rule established in the panel decision, that a “dismissal without prejudice” does not restart the statute of limitations under 315(b).

        The reason is simple and straightforward — rulings on this issue are not fully insulated from appellate review. Patent owners could simply wait until after IPR institution to raise this argument; the PTAB would then have to rule on the 315(b) issue as part of a Final Written Decision, which is fully reviewable by the Federal Circuit on all issues. That would allow the Federal Circuit to apply its rule from Click-to-Call.

        There is no requirement that the patent owner raise the 315(b) issue pre-institution (or any other since pre-institution responses are optional). Considering what we know about the different ways the PTAB and CAFC view this rule, a wise patent owner who has this argument will simply wait until after institution to raise it, allowing the Federal Circuit to enforce the rule they articulated in this case.

        Of course, the PTAB could adopt two standards, one it applies to pre-institution arguments and a different one to post-institution arguments, but that would be unseemly and I don’t expect they’d ever do that.


          “— rulings on this issue are not fully insulated from appellate review. Patent owners could simply wait until after IPR institution to raise this argument; the PTAB would then have to rule on the 315(b) issue as part of a Final Written Decision, which is fully reviewable by the Federal Circuit on all issues. That would allow the Federal Circuit to apply its rule from Click-to-Call.”

          I’m not following. Isn’t that exactly the scenario in this case? The 315(b) issue was a critical part of the PTAB’s Final Written Decision. That issue was the appellant’s only argument to the Fed. Cir. after that Final Written Description. But SCOTUS said that argument is not reviewable. Or to put it another way, a Final Written Decision is not fully reviewable by the Federal Circuit on all issues.


            I do not follow that part of LR 6.2.1 either. As the AIPLA put it: “The United States Supreme Court on April 20, 2020, held that 35 U.S.C. § 314(d), which states that the Patent Trial and Appeal Board’s (PTAB) decision to institute an inter partes review (IPR) is nonappealable, also precludes judicial review of a time bar determination under 35 U.S.C. § 315(b). Thryv, Inc. v. Click-To-Call Technologies, LP, U.S., No 18–916, 4/20/20.
            Despite Click-to-Call’s argument that the bar on appeals under §314(d) is limited to the PTAB’s threshold determination under §314(a) of the question whether the petitioner has a reasonable likelihood of prevailing, the Court explained that Cuozzo Speed Technologies, LLC v. Lee “is fatal to that interpretation.”


            Thomas, you raise an excellent point, and I stand corrected.

            My confusion was based on the fact that the PTAB in the Click-to-Call case addressed the 315(b) issue in BOTH the institution decision, and again reiterated its decision in the Final Written Decision. You could at least argue that appealing the 315(b) issue through a Final Written Decision was an end-run around the bar against appealing that same ruling made in an institution decision.

            This at least raises an open question as to what would have happened if the PTAB addressed the 315(b) issue ONLY in its Final Written Decision? But looking at the opinion, Thomas, I think your assessment is right. The last paragraph of the Supreme Court majority opinion seems to brush this issue off by saying that the 315(b) issue always goes to whether IPR should be instituted at all, regardless of when it’s raised. But I could see the Federal Circuit using this distinction as an argument for trying to regain some power to review these types of issues in cases where arguments are raised only post-institution.

            But if the case is interpreted as barring any appeal of “institution-related” issues, regardless of timing, it would be a major power shift away from the CAFC to the PTAB. Aside from statute of limitations issues, there are a number of other hot issues such as real-party in interest, estoppel, joinder, etc., that the PTAB could now rule on without CAFC review. Although CBMs are all but dead (the provision sunsets in five months), all of the CAFC cases restrictively defining what a “covered business method patent” would be wiped out, as this issue would no longer be appealable either. Basically the CAFC would be limited to only reviewing the substantive merits (patentability/unpatentability) in an IPR decision.


              Re: “..issues such as real-party in interest, estoppel, joinder, etc., that the PTAB could now rule on without CAFC review.” ? Not all of those issues may be IPR institution issues, to which the non-appealable statute only applies, especially if they arise after institution?

    2. 6.3

      The short answer and the bottom line — there will be no institution of trial where a complaint alleging infringement was served more than one year prior to filing the IPR request even if the District Court action was voluntarily dismissed without prejudice.

      The SCOTUS dissent says the USPTO Director, via the Solicitor General, said that the “dismissal without prejudice” should have been taken as sufficient for a bar under the statute. The present Director’s opinion came subsequent to the relevant PTAB decision. The present Director designated the PTAB decision, Infiltrator Water Technologies v. Presby Patent Trust, as precedential and thus binding on the PTAB, and in turn on the USPTO. That decision bars institution if the complaint was served more than one year prior to filing of the IPR request even if there was a subsequent dismissal without prejudice. The precedential decision follows the Fed. Cir.’s Click-to-Call and is, perhaps not incidentally, anti-challengers to patents.

      So where we are, under the SCOTUS precedent and the present PTAB SOP, the Director can control how PTAB panels construe statutes without Article III review. What could possibly go wrong?

  8. 5

    I have very strong reservations about foreclosing judicial review of whether an administrative agency acted outside of its congressionally-delegated authority.

    However, I cannot definitively say that Congress did not intend to bar review of whether a petition was time-barred.

    I think that whether this issue is further developed depends in large part on the frequency and extent of departures from statutory requirements in future institution decisions.

    1. 5.1

      The intent of Congress is LESS at point here than whether or not the underlying property aspect (even to grant to Greg DeLassus his view that “Public Franchise” property was still property) may be so treated under LARGER Constitutional protections.

      At first glance, this is very much the ‘anti-Marbury, and that, being driven merely because “0h n0es, bad patents.”

      As I have also noted, this should be viewed as extremely concerning given that the Court is most likely to continue to veer to the Right (and NOT in favor of individuals).

      1. 5.1.1

        Congressional intent is relevant because “‘only upon a showing of ‘clear and convincing evidence’ of a contrary legislative intent should the courts restrict access to judicial review.'” Abbott Laboratories v. Gardner, 387 U.S. 136, 141 (1967).


          That begs the point that any particular restriction is itself legitimate under other Constitutional concerns J. Doerre.

          (But thanks for the case, I will check that out – in the meantime, you may want to read again Marbury v Madison.


          This was hashed out in Cuozzo. Justice Alito’s dissent explained how strong the presumption favoring judicial review is with what I thought was a compelling example. The majority disagreed and seemed to think that 35 USC 314(d) is about as clear as Congress can be. It’s titled “No appeal” and reads “The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”

          As anon points out, though, to say that the statute bars review is not to say that that result is legitimate. I’m inclined to think it is legitimate, at least because final written decisions get appellate review and no patentee has its patent extinguished without judicial review of the substance.

          On the other hand, procedures matter, and how far Congress chose to go in allowing IPRs in the first place matters. In criminal cases, statutes of limitations and procedural technicalities mean that obviously guilty criminals go free. In civil court cases, procedural violations can also change the results of cases. It’s not hard to imagine an anti-patent PTO director who decides to unilaterally “toll” the 1-year time bar and just let anyone challenge patents whenever they want. The idea that no court can do anything about that is… disturbing and I don’t have a great answer for why that is or should be ok.

    2. 5.2

      I cannot definitively say that Congress did not intend to bar review of whether a petition was time-barred.

      Really? You are trying too hard to give the SCOTUS the benefit of the doubt if you are willing to entertain the possibility that Congress wrote in a one-year time bar, but also intended that no court should have the authority to enforce that provision. There is 0% chance that this outcome gives effect to Congress’ intended will. This is just another instance of the Court determined to reach a particular policy outcome, statutory text be hanged.

      Hopefully, Congress will simply amend this code section in the next patent reform bill, thus adding to the long and storied history of Congress legislatively reversing the Court’s mistakes.

      1. 5.2.1

        To be completely honest, I mostly agree with you and probably regret not filing an amicus brief. I was planning on it but ultimately got really busy and decided based on SAS that there was no need. I regret it only because I should have tried, but I’m not arrogant enough to think there is any reason to believe a brief I filed would have made a difference.

        I would have liked to see Thryv decided on a distinction between challenges to an institution decision (which are barred), and challenges of the Director’s authority to institute (which are not). The Supreme Court recognized this distinction in Crowell v. Benson, 285 U.S. 22 (1932), and Congress codified this distinction into 5 U.S.C. 706. However, the Supreme Court arguably abrogated this distinction when a constitutional right is not implicated when it indicated that “[b]ecause the question—whether framed as an incorrect application of agency authority or an assertion of authority not conferred—is always whether the agency has gone beyond what Congress has permitted it to do, there is no principled basis for carving out some arbitrary subset of such claims as ‘jurisdictional.’” City of Arlington v. Fed. Commc’ns Comm’n, 569 U.S. 290, 298 (2013).

        The Supreme Court’s concerns regarding unwinding the IPR decision could have been allayed with a sua sponte ex parte reexam.

        At this point, if I was faced with an erroneous petition, I would act to try to challenge it in an article III court BEFORE the institution decision is issued.


          Re: “..faced with an erroneous petition, I would act to try to challenge it in an article III court BEFORE the institution decision is issued.”
          Not to discourage trying, but would that not run into other case law precluding such premature appeals from administrative tribunals before the initiation issue is even created? I think I vaguely recall failures of D.C. suit attempts to prevent some interferences and reexaminations before they were ever formally declared by the PTO?


            That’s a great point Paul. I don’t have any satisfying answer without digging through the law and trying to develop a strategy, which I am not inclined to do unless the issue comes up.

      2. 5.2.2

        ” There is 0% chance that this outcome gives effect to Congress’ intended will.”

        You have such a high degree of confidence here that I wonder if I’m missing something.

        You appear to suggest that Congress wouldn’t have written in a time threshold and then exclude that threshold from judicial review. Why is that time threshold different from the “reasonable likelihood” threshold in 314(a)? Congress said “don’t do X unless Y, and no one can question you about Y”. Why then is it so absurd that congress would also say “Also, don’t do X unless Z, and no one can question you about Z”.


          You are missing something.

          The larger issue here is not what Congress did.

          It is about our structure of government that does not allow ANY branch did operate against other protections in the Constitution.

          There IS clear logic in the majority holding here.

          That does not make the result to be a correct result.

          If you refuse to see that the scoreboard is broken, then you will not understand why that broken scoreboard needs to be fixed, and you have no business partaking in the discussions here.


          You appear to suggest that Congress wouldn’t have written in a time threshold and then exclude that threshold from judicial review. Why is… so absurd that congress would… say “… don’t do X unless Z, and no one can question you about Z”.

          Thanks, Ben. This is a fine and fair question, and I hope that you will indulge a wordy answer. There are 3 lines of evidence that inform the firmness of my assertion, and I will address each in turn. I would urge the reader, however, to remember that these 3 should be considered together. Even if any single strand of evidence is not independently convincing, I think that it would be a mistake to pick each apart individually without considering the enormous coincidence that it would represent if one were to conclude that all three of these approaches point towards one particular “intent of Congress,” and yet that particular intent is not genuine.

          (1) Teleology. Statutes should be construed so as to give effect to the public policy purpose that they are plainly meant to advance. The whole point of the IPR scheme was to provide a less time consuming (and therefore more cost efficient) alternative to Art. III patent litigation. The goal was to get validity disputes resolved promptly and efficiently. A reading of the statute which incentivizes defendants to bring the IPRs promptly, therefore, comports with the goals of the statute. Conversely, a reading which incentivizes defendants to tarry in their IPR filings frustrates the goals of the statute. By cutting off the ability of the judiciary to punish a defendant for tarrying, one incentivizes tarrying. It makes no sense to suppose that Congress intended to incentivize tarrying. The plain common-sense teleology of the overall statutory scheme, therefore, counsels against a reading in which §315(a)(1) or (b) are merely hortatory.

          (2) Statutory text. Section 314(d) provides that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable” (emphasis added). Grammatically, this sentence structure can be parsed two different ways. One can read “under this section” to refer to the Director’s determination, or to the institution. Either reading comports with English grammar. If the “under this section” refers to institution, then that really is a firm bar to judicial review. If, however, the “under this section” refers to the Director’s determination, then that merely means that one is not allowed to second guess the Director’s assessment of “reasonable likelihood that the petitioner would prevail” on appeal—not that no aspect of the institution decision is unreviewable.

          So, to which of those two predicates should we read “under this section” as applying? The very fact that in the next section the statute starts laying down limitations on the Director’s power is itself evidence that the §314 “under this section” should be read as applying to the Director’s decision, not to the institution itself.

          (3) Case law. Congress is strongly presumed to intend for judicial review of its statutory dictates. Mach Mining v. EEOC, 135 S. Ct. 1645, 1651 (2015). This presumption is so strong that it can only be overcome by a clear statement to the effect that Congress intends to cut off judicial review. Block v. Community Nutrition Inst., 467 U.S. 340, 345 (1984). Critically, this clear statement must be clear in view of the “statutory scheme as a whole.” Id.

          As noted above, there is a patent ambiguity in the phrasing of §314 itself, so it is not even clear that one needs to look at the rest of the statute to depreciate the clarity of this no-review statement. When one looks at this statute as a whole, however, there really is no remaining grounds to argue that the supposed expression of intent to bar all judicial review is made clear. One can find a clear statement in §314(d) that Congress intended to cut off judicial review, but only as to determinations made “under this [§314] section.” Then one flips the page to §315, and finds that Congress put in limitations on the power of the Director to institute. Do the §314 limitations—which on their face apply only to determinations “under this [i.e. §314] section—apply also to §315? This is the opposite of clear—it is confusing. A confusing statement is not enough to overcome the presumption in favor of judicial review, so the logical conclusion is that Congress—in writing this way—did not intend to cut off judicial review.


            This is very well done Greg.

            The thing is that Ben knew this and posed his question to get you to do work or leave a question sitting there that would cause confusion to those not familiar with patent law or statutory construction.


            Thanks for the thoughtful reply Greg.

            I think it’s strange that you’d argue (under #3) that ‘the congressional intent is clear because the congressional intent is unclear’. If you say it is so, I can accept that this is how lawyers view this circumstance. But it really seems more like an arguement for: “the proper interpretation is clear because the congressional intent is unclear”. I would’ve found “There is 0% chance that this outcome is the right outcome” a much less surprising statement. And I think that it’d be very reasonable for this argument to carry the day, even though I lean towards the expansive interpretation of 314(d) as Congress’s actual intent.

            I’d also note that making the time bar non-appealable is hardly incentivizing defendants to delay their IPR filings. A defendant cannot count on a delayed petition being instituted. Instead, if the time-bar is non-appealable, it would seem to simply give the PTO some additional flexibility in helping undeserved patents be dealt with- isn’t that the overriding policy idea behind IPRs?


              The “over-riding policy” is to fully act within all of the expressed restraints.

              It is a most odd view to want something different than those expressly provided words. What you seem to want is for Congress to have expressly stated: the following are merely optional….


              As I said Greg, Ben’s point is to cloud the issue. He is the typical tr oll. I’d put money on it that Ben is a paid blogger. All the signs are there. He spits out the party line and disrupts any argument that is not part of the party line.

                1. reply caught in the George Carlin filter.

                  Suffice to say, I agree with you that is ‘could’ be both.

                  But as noted: link to

                  Ben provides the same mindless anti-software rants that reflect the same “Ben” that upvoted most all of the v0m1t that Malcolm posted in the days of this blog’s DISQUS commenting use.

  9. 4

    So if you are charged and convicted of a crime after the statute of limitations, then I guess under this ruling, the conviction should stand.


    1. 4.1

      What this decision illustrates is that the Scotus has no regard for a patent as property, but only as some administrative privilege that you have been afforded.

      1. 4.1.1

        This is truly a historical analogue to Marbury.

        Institutional distaste of those “damm scriveners”….

  10. 3

    The two Click-to-Call dissenters make for strange bedfellows. The majority further demonstrates Sup. Ct. distaste for Fed. Cir. reviving on procedural rather than merit grounds patent claims held invalid in an IPR, which does not bode well for some of other cert petitions discussed here lately.

    1. 2.1

      Yeah. Although they did leave the door open for a due process challenge. But don’t stay up late waiting for that to happen, or to change anything when it does.

      1. 2.1.1

        AM, as you note that this decision does not apply to due process violations. That is NOT irrelevant as there have already been at least 4 or 5 Fed. Cir. decisions remanding IPR decisions for due process violations.
        Furthermore, as quoted by Dennis above [but ignored by hyperbolite flamers here] the Sup. Ct. in Cuozzo set forth several such extraordinary situations in which time bar or other IPR institution decision issues CAN be appealed in spite of the statute against appeals. Here, the Sup. Ct. factually distinguished this case on its [easily avoidable] facts.


          So if I am a hyperbolite flamer then you are an carpet bagging apologist for the judicial activist anti-patent crowd. You have to love the apology offered. Gee, yes we did something wrong and it did a lot harm to the patentee, but you can avoid these facts if you are careful so we can’t do it to you in the same way. LOL!


            Re: “avoid these facts if you are careful..” Isn’t that what good lawyers are supposed to do?
            The issue is not just complaining about every judicial decision one dislikes without substantive arguments. It is about attorneys here deliberately missleading non-lawyer readers of these blog comments as to the actual scope of a decision that is objectionable, and I intend to continue to pro bono object to that. This patent law blog is not supposed to be like some FOX news commentors telling the public that Covid-19 is just a political scare.


              … and your own biases never interfere or inject themselves, eh Paul?

              No matter how you want to dress up your ‘protect the public’ spiel, you are every bit as ‘bad’ as the people that you ‘object to.’

              If not worse, given as YOUR predilections go to harming innovators and the strong patent right.


              Paul you are begging the question. Of course lawyers need to understand the scope of a decision for future cases. And of course part of the analysis of a case is the applicability of the case to future cases.

              But the issue here is whether this case was decided properly or not. And secondarily how widely will it apply. Further an underlying issue here is whether the Scotus just like the CAFC will invalidate any claim they don’t like on some pretense they fabricate. Does it matter that the facts could be construed narrowly? Maybe not as we don’t know what the CAFC will do with this and we don’t know if the next time claims come to the Scotus or CAFC that they won’t just find another way to invalidate the claims based on policy issues creating yet another landmine to navigate.

              Be nice if you stopped playing rhetorical games and dealt with the real issues that have been raised.


              “This patent law blog is not supposed to be like some FOX news commentors telling the public that Covid-19 is just a political scare.”

              Why do you think that? I don’t think Dennis is optimizing for clicks, but the management doesn’t really suggest a strong interest in “educating the public”. At thia point I suspect the driving factor behind the management style is profound disinterest.


                Why Ben do you write as if you aren’t one of the commentators on Fox saying that Covid-19 is just a political scare? We all know you are.


              Now that you’ve said this twice, how are these “avoidable facts” from the patentee’s perspective?

              The petitioner has control over when it files. I suppose the PTAB decides whether to institute and whether to invalidate claims, and the patentee can file briefs at both stages, but that doesn’t make the result “avoidable” any more than any loss in litigation might be called “avoidable.”


                ? This case is about the fact that an IPR Petitioner does NOT have full “control” over when it files. A Petitioner by statute must file within one year from when it was first served with a suit complaint. There would not even have been a case here if that had been done to avoid that bar. [Instead of arguing that the [also avoidable] way in which the law suit was dismissed should reset that bar date.]

                1. Now I’m really not following. And maybe I’m missing something obvious.

                  The critics of this decision seem not to like it because it allows the PTAB to institute an IPR and invalidate patents–even when the petition is filed late–without any recourse to a court w/r/t the time bar. From the patentee’s perspective, the patent is gone through a procedure that never should have been started in the first place.

                  …to which you seem to be saying that something is “avoidable” about that and I’m not sure what’s avoidable or by whom.

                  If you’re saying that the petitioner could have avoided this by filing on time, I’m not sure what you’re responding to.

                2. Great questions dcl.

                  And Paul why is it that the petitioner could not have filed earlier? When, in fact, they could have.

  11. 1

    Any Means for the desired Ends.

    Who sees a problem from this (even if based on a Court moving FAR to the Right)?

    1. 1.1

      When the Rule of Law is so causally tossed aside and the “its just patents as property” underlies the bland acceptance, I am reminded of the great slippery slope poem:


      First they came for the Communists
      And I did not speak out
      Because I was not a Communist
      Then they came for the Socialists
      And I did not speak out
      Because I was not a Socialist
      Then they came for the trade unionists
      And I did not speak out
      Because I was not a trade unionist
      Then they came for the Jews
      And I did not speak out
      Because I was not a Jew
      Then they came for me
      And there was no one left
      To speak out for me

      1. 1.1.1

        This is amusing. Some commenters do seem to have this kind of complex about decisions that favor defendants.

        First they came for the obvious patents.
        And I did not speak out because I did not hold an obvious patent and “they” were supposed to be coming for obvious patents all along anyway.

        Then they came for the software patents (well, some of them)
        And I did not speak out because I did not hold a software patent, or at least not one of the bad ones.

        Then they came for the diagnostic patents.
        And actually a lot of people did speak out, and Congress might be willing to fix it if there’s a coherent line to be drawn in legislation that doesn’t threaten to make hospitals the next victims of the EDTexas racket.

        Then they came for the obvious and anticipated patents owned by people who would prefer to have juries decide patent validity.
        And I did not speak out because I did not hold one of those patents either.

        Today they came for the obvious and anticipated patents that were challenged by petitioners who the patentee thinks were time-barred, but the PTAB didn’t think so, but the patentee would prefer to have a court review that decision…
        And I finally realized that history was repeating itself and it was time to post this poem to stave off World War III and a repeat of one of history’s great atrocities.


          I did chuckle, even as I would take issue with your portrayal of the groups being aimed at (which certainly smacks of the “well, those people deserved it” — in the best anti Sir Thomas More mode).


            It’s definitely tendentious and meant to amuse. I’m glad it had that effect.

            If one sees this decision as result-oriented and part of a larger slide down the slope of devaluing patents, Niemoller isn’t entirely out of place.

            I don’t think I see it that way, which is why the policy musings in the majority opinion bother me. Thryv isn’t a constitutional decision, it’s about what Congress said in the AIA. I think 314(d) pretty clearly bars judicial review of institution decisions, including on time-bar grounds, and the court should’ve just quoted the statute, referenced Cuozzo, and called it a day. The idea that the result is correct because it makes it easier to kill patents efficiently doesn’t belong in the opinion.


              … and yet, the Justices (at least some of them) wanted it there and simply did not care at all about any ‘smoking g u n’ effect.

              The Court HAS BEEN engaging in policy from the Bench, and any consideration that they have ‘merely’ been exercising proper Common Law ‘interpretation’ is — and should be — denigrated.

    2. 1.2

      In addition to my point vis a vis “even if based on a Court moving FAR to the Right“, from that very same Court we have the slip opinion Ramos v. Louisiana 590 U. S. ____ (2020) , which while ITS content is not pertaining to patent law, DOES portend to future shifts by the Court.

      Sir Thomas More comes to mind (in addition to Pastor Martin Niemoller).

      Those ‘being quiet” because ‘just patents’ and ‘they deserve it’ will rue the day “when the last law was down, and the Dev i1 turned ’round on you, where would you hide,

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