Presented by John Goodhue
In an opinion by Justice Ginsburg, a 7-2 Supreme Court held that 35 U.S.C. Section 314(d) bars judicial review of the Patent Trial and Appeal Board's application of the Section 315(b) one-year time bar for instituting inter partes review. Because Section 315(b) expressly governs institution and nothing more, a contention that a petition is untimely is, in substance, a contention that the agency should never have instituted review — and Section 314(d) makes the determination whether to institute review final and nonappealable. The Court grounded the result in the statute's text and in the design of inter partes review, which is meant to weed out bad patent claims efficiently; allowing appeals of timeliness rulings would unwind agency decisions that had already resolved patentability. The holding extends the Court's 2016 Cuozzo decision and displaces the Federal Circuit's en banc ruling in Wi-Fi One v. Broadcom. Justice Gorsuch, joined in part by Justice Sotomayor, dissented.
Thryv v. Click-to-Call Technologies, decided April 20th, 2020. By a vote of seven to two, in an opinion by Justice Ginsburg, the Supreme Court reviewed the Federal Circuit and held that section 314(d) of the Patent Act bars judicial review of the Patent Trial and Appeal Board's application of the section 315(b) time bar. A challenge that review should never have been instituted because the petition was untimely is a challenge to the institution decision — and that decision is nonappealable. Here's the brief.
Click-to-Call Technologies owns a patent on technology for anonymous telephone calls. In 2013, Thryv — acting through predecessor entities — petitioned for inter partes review, challenging several of the patent's claims. Click-to-Call objected that the petition was too late. It pointed to an infringement suit filed back in 2001 involving the same patent, a suit that had ended in a voluntary dismissal without prejudice. In Click-to-Call's view, that 2001 suit started the one-year clock, making the 2013 petition untimely.
The Board disagreed. A complaint dismissed without prejudice, it concluded, does not trigger the time bar. The Board instituted review, and after proceedings on the merits, it issued a final written decision canceling thirteen of the patent's claims as obvious or lacking novelty.
Click-to-Call appealed, challenging only the timeliness ruling. Sitting en banc in a separate case, the Federal Circuit had held that time-bar determinations are appealable. Applying that rule here, the court held the petition untimely, vacated the Board's decision, and remanded with instructions to dismiss.
The question presented: does section 314(d)'s bar on reviewing the institution decision preclude an appeal of the Board's section 315(b) timeliness ruling?
Section 314(d) provides that the determination whether to institute inter partes review shall be final and nonappealable.
Section 315(b) supplies the time bar: review may not be instituted if the petition comes more than one year after the petitioner was served with a complaint alleging infringement. The Court's 2016 decision in Cuozzo Speed Technologies v. Lee framed the analysis, holding that section 314(d) bars review at least where the grounds for attacking institution are closely tied to statutes related to the decision to institute. Click-to-Call read the bar more narrowly — as reaching only the agency's threshold judgment under section 314(a) that a petitioner is reasonably likely to prevail. The dispute was whether the time bar fell inside the bar on review, or outside it.
The Court held that a section 315(b) challenge fits that description.
Section 315(b), the Court reasoned, does one thing: it governs institution. It sets out a circumstance in which review may not be instituted. So a contention that a petition is untimely is, in substance, a contention that the agency should never have instituted review at all. The Court grounded that reading in the text: section 314(d) shields the determination whether to institute review "under this section" — not merely the threshold determination under subsection (a) that Click-to-Call would have singled out.
That conclusion, the Court explained, was reinforced by the statute's purpose and design. Congress built inter partes review to weed out bad patent claims efficiently. Allowing appeals of timeliness rulings would unwind agency proceedings that had already resolved patentability, leaving canceled claims resurrected and bad patents enforceable. The statutory scheme, the Court noted, consistently subordinates the time bar to the merits — a barred petitioner's failure does not even stop the agency from reviewing the same claims at another petitioner's request. The Court distinguished SAS Institute v. Iancu: that case concerned how a review proceeds once instituted, not whether it should have been instituted at all.
Justice Gorsuch dissented, joined in principal part by Justice Sotomayor. He would have allowed review, warning that the majority left inventors' property rights to what he called bureaucratic mercy.
Thryv extended Cuozzo from the particularity requirement at issue there to the section 315(b) time bar, confirming that section 314(d)'s appeal bar reaches well beyond the agency's threshold likelihood-of-success determination. In doing so, it displaced the Federal Circuit's en banc decision in Wi-Fi One v. Broadcom, which had held time-bar rulings appealable. The case stands for this rule: because the section 315(b) time bar is a condition on institution, the Board's application of it is part of the nonappealable decision whether to institute, insulated from judicial review under section 314(d).
Thryv, Inc. v. Click-to-Call Technologies, 590 U.S. 45, decided April 20th, 2020. I'm John Goodhue. Thanks for watching.
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