April 22, 2020

Supreme Court Rules That IPR Time Bar Determinations Are Not Appealable

3 min

On April 20, 2020, the Supreme Court in Thryv v. Click-To-Call, No. 18-916, ruled 7-2 that determinations by the Patent Trial and Appeal Board (PTAB) whether to apply the time bar of 35 U.S.C. 315(b) to inter partes review (IPR) proceedings are not appealable. In so doing, the Supreme Court effectively abrogated the Federal Circuit's en banc decision in Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018), which held that such determinations are appealable.

IPR proceedings were established by the America Invents Act of 2012 (AIA). One part of the AIA, 35 U.S.C. 314(d), states that "[t]he determination by the [Patent and Trademark Office] Director whether to institute an inter partes review under this section shall be final and nonappealable." Another part of the AIA, 35 U.S.C. 315(b)—commonly known as the "time bar"—states that "[a]n 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."

In this case, Thryv's predecessor petitioned for an IPR challenging Click-To-Call's patent. Click-To-Call argued that the IPR was time-barred because the patent had been asserted in a complaint against another Thryv predecessor in 2001, which complaint was later dismissed without prejudice. The PTAB disagreed, reasoning that a complaint dismissed without prejudice did not trigger the time bar. The IPR was instituted and proceeded to a final written decision in which the PTAB held Click-To-Call's patent claims obvious.

Click-To-Call appealed. The Federal Circuit, proceeding under Wi-Fi One, reviewed the PTAB's time bar determination and concluded that the 2001 complaint—though dismissed without prejudice—nevertheless triggered the §315(b) time bar. The Federal Circuit vacated the PTAB's final written decision. Thryv then sought certiorari, which the Supreme Court granted on the question of whether the PTAB's time bar determinations are reviewable by the Federal Circuit.

Justice Ginsburg, writing for the Supreme Court majority, concluded that such decisions are not reviewable. In reaching that conclusion, the majority relied on the Supreme Court's 2016 precedent in Cuozzo Speed Technologies, LLC v. Lee, 579 U. S. ___, ___ (2016), to assert that "[w]e need not venture beyond Cuozzo's holding that §314(d) bars review at least of matters 'closely tied to the application and interpretation of statutes related to' the institution decision, for a §315(b) challenge easily meets that measurement…Because §315(b) expressly governs institution and nothing more, a contention that a petition fails under §315(b) is a contention that the agency should have refused 'to institute an inter partes review' [under] §314(d)." The majority further observed that allowing the PTAB's decisions on the merits in IPRs to be appealed and vacated based upon time bar issues potentially would "wast[e] the resources spent resolving patentability and leav[e] bad patents enforceable."

The majority rejected Click-To-Call's argument that §314(d)'s prohibition against appeals applied only to the PTAB's substantive determination of whether to institute an IPR proceeding under §314(a). The majority explained that, under Cuozzo §314(d) extends to appeals grounded in "statutes related to" the institution decision, and that "every decision to institute is made 'under' §314 but must take account of specifications in other provisions—such as the §312(a)(3) particularity requirement at issue in Cuozzo and the §315(b) timeliness requirement at issue here."

Justice Gorsuch dissented (with Justice Sotomayor joining in part), writing that the majority would permit "a politically guided agency's [decision]…to stand immune from judicial review." According to the dissent, "the only thing §314(d) insulates from judicial review is '[t]he determination' made 'by the Director' 'under this section'—that is, a determination discussed within §314. Nothing in the statute insulates agency interpretations of other provisions outside §314, including those involving §315(b)."