In Thryv, Inc. v. Click-to-Call Technologies, LP,1 the Supreme Court held that the Patent Trial and Appeal Board (Board) decision whether an inter partes review (IPR) petition was timely filed could not be appealed.
In a 7-2 decision written by Justice Ginsburg, the Court reversed the Federal Circuit and ruled that since the America Invents Act states that Board decisions for instituting IPR are final and not appealable, such institution decisions that are not appealable include whether the petition was timely filed. Chief Justice Roberts and Justices Breyer, Kagan and Kavanaugh joined fully in the opinion. Justices Thomas and Alito joined with the decision except for the policy statements found in Section III.C.
The Court provided the following explanation and holding regarding why the timeliness of filing the petition for IPR was not appealable:
Inter partes review is an administrative process in which a patent challenger may ask the U.S. Patent and Trademark Office (PTO) to reconsider the validity of earlier granted patent claims. This case concerns a statutorily prescribed limitation of the issues a party may raise on appeal from an inter partes review proceeding.
When presented with a request for inter partes review, the agency must decide whether to institute review. 35 U.S.C. § 314. Among other conditions set by statute, if the request comes more than a year after suit against the requesting party for patent infringement, “[a]n inter partes review may not be instituted.” § 315(b). “The determination by the [PTO] Director whether to institute an inter partes review under this section shall be final and nonappealable.” § 314(d).
In this case, the agency instituted inter partes review in response to a petition from Thryv, Inc., resulting in the cancellation of several patent claims. Patent owner Click-to-Call Technologies, LP, appealed, contending that Thryv’s petition was untimely under § 315(b).
The question before us: Does § 314(d)’s bar on judicial review of the agency’s decision to institute inter partes review preclude Click-to-Call’s appeal? Our answer is yes. The agency’s application of § 315(b)’s time limit, we hold, is closely related to its decision whether to institute inter partes review and is therefore rendered nonappealable by § 314(d).
Justice Gorsuch dissented and was substantially joined by Justice Sotomayor. Justice Gorsuch argued that the Constitution does not authorize 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.
It might be one thing if Congress clearly ordained this strange result. But it did not. The relevant statute, the presumption of judicial review, and our precedent all point toward allowing, not forbidding, inventors their day in court. Yet, the Court brushes past these warning signs and, in the process, carries us another step down the road of ceding core judicial powers to agency officials and leaving the disposition of private rights and liberties to bureaucratic mercy.
Takeaways:
The Court’s decision entrusts the Board with significant responsibility when determining whether to institute an IPR since the Board’s decision is not appealable. This power may also extend to other procedural matters for instituting IPR, such as issues of joinder and real party in interest. Accordingly, patent owners can only petition for rehearing within the Patent Office to request that the Board reconsider its decision to institute IPR based on points believed to have been overlooked or misapprehended and which involve possible abuse of discretion. See 37 C.F.R. §§ 42.71(c), (d). As a result of the Court’s decision, it is quite likely that patent owners will file more requests for rehearing. It will be interesting to see how the Board handles the potential additional workload and what ramifications, if any, result.
1 Thryv, Inc. v. Click-to-Call Technologies LP, ---- S.Ct. ----, 2020 WL 1906544, 2020 BL 145450 (2020).
Irah Donner is a partner in Manatt’s intellectual property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.