Last week, the Supreme Court of the United States issued an opinion in Thryv, Inc. v. Click-to-Call Technologies, 18-916 (April 20, 2020), holding the Patent Trial and Appeal Board’s determination on timeliness of a petition for inter partes review (IPR) cannot be appealed.
In 2013, Thryv filed an IPR petition challenging several claims of a Click-to-Call patent concerning technology for anonymous telephone calls. Click-to-Call opposed the petition as untimely, under 35 U.S.C. § 315(b), because of a 2001 lawsuit in which the patent was asserted against a Thryv predecessor. The 2001 lawsuit ended in a voluntary dismissal without prejudice. Section 315(b) states an IPR cannot be instituted if the petition is filed more than one year after the requestor is served with a complaint for patent infringement. Though several years had passed between the infringement suit and the IPR petition, the Board rejected Click-to-Call’s timeliness challenge, concluding that a complaint dismissed without prejudice does not trigger § 315(b)’s one-year limit. The Board instituted the IPR, and issued a final written decision canceling many claims.
Click-to-Call appealed. The Federal Circuit dismissed the appeal for lack of jurisdiction, citing 35 U.S.C. § 314(d). Section 314(d) states the Board’s determination on whether to institute an IPR “shall be final and nonappealable.” The Supreme Court granted certiorari and, citing its intervening decision in Cuozzo, vacated and remanded. On remand, the Federal Circuit again dismissed the appeal. Subsequently, in Wi-Fi One, LLC v. Broadcom Corp., the en banc Federal Circuit held “‘time-bar determinations under § 315(b) are appealable’ notwithstanding § 314(d).” The Wi-Fi One decision prompted the Thryv panel to grant rehearing. The Federal Circuit’s revised opinion held Thryv’s IPR petition was untimely because the 2001 lawsuit triggered § 315(b)’s one-year limit even though it was dismissed without prejudice. The Supreme Court granted certiorari again.
On review, the Supreme Court vacated and remanded with instructions to dismiss the appeal for lack of jurisdiction. The Court held that “[a] challenge to a petition’s timeliness under § 315(b) [] raises ‘an ordinary dispute about the application of’ an institution-related statute.” Thus, as in Cuozzo, the presumption favoring judicial review is overcome, and § 314(d) bars review. As further support for its decision, the Court highlighted the overall statutory design, which it found confirmed Congress’s “concern[] about overpatenting” and prioritization of resolving “patentability over § 315(b)’s timeliness requirement.” Justice Gorsuch, joined in part by Justice Sotomayor, dissented.