Thryv is thriving! Thryv v. Click to-Call Technologies, LP

The United States Supreme Court [hereinafter ‘the Court’] recently held that timeliness of initial petitions under the inter partes review provisions [hereinafter IPR][1] of the America Invents Act cannot be appealed to a judicial court. Thryv, Inc. v. Click-to-Call Technologies, LP. et al., 590 U.S. ___ (2020)[hereinafter ‘Thryv’ and ‘Click-to-Call’]. In so holding the Court emphasized that one purpose of IPR is a more cost-effective alternative to conventional litigation, and to allow appeals of a decision to  commence an IPR would jeopardize this purpose.

This case began when the United States Patent Trial and Appeal Board [hereinafter ‘the Board’] commenced an IPR where Thryv challenged Click-to-Call’s patent. Although Click-to-Call maintained that Thryv filed its petition after the statutory deadline, the Board proceeded and ultimately cancelled thirteen of Click to-Call’s claim sentences.[2] Click-to-Call appealed to the United States Court of Appeals for the Federal Circuit [hereinafter ‘Federal Circuit’] which, after a previous remand, treated the timeliness issue as judicially reviewable. The Federal Circuit then concluded that the petition was untimely, vacated the Board’s decision and remanded for dismissal of the IPR.

Before the Court, Thryv contended that the text of  35 U.S.C. section 314(d)[3], as well as Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. ___, 136 S. Ct. 2131 (2016),[4] confirms that the Board’s decision whether  to commence an IPR,  and even for reasons arising under other statute provisions, is final and non-reviewable.  According to Cuozzo, in this instance the question of untimeliness was closely tied to the application and statutes related to the “institutional decision;” consequently the Board’s decision to commence IPR was non-reviewable. In contrast, Click-to-Call maintained that appeal of an IPR commencement is prohibited under section 314(d) only where the question is whether a petitioner has a reasonable chance to prevail under section 314(a).[5] Click-to-Call also contended that the text of section 314(d) supports its position, because this text refers to “this section” and “this section” refers exclusively to section 314.

The Court vacated and remanded this case to the Federal Circuit. In so doing, the Court stated that  section 314(d) prevents an appeal of timeliness under section 315(b), and in a manner similar to Cuozzo which also addressed application of a statute other than section 314(a). The Court also stated that  section 314(d) does not limit the appeal bar to section 314(a), because Congress would have used language such as ‘reviewable under section 314(a)’ instead of ‘this section.’ Furthermore, it is clear that Congress drafted the IPR statute to entrust the decision whether to commence an IPR to the patent office. This result is distinguishable from that of SAS Institute, Inc. v. Iancu, 584 U.S. ___,128 S. Ct. 1348 (2018), because SAS Institute addresses judicial review of IPR proceedings, and not whether IPR should have commenced in the first instance.

[1] An inter partes review is an administrative process by which a patent challenger asks the U.S. Patent and Trademark Office [hereinafter ‘patent office’] to reconsider the validity of a patent.  The patent office must first agree to institute review after the patent challenger submits a petition.

[2] Claims comprise sentences at the end of a patent which designate the subject matter to be protected, and they do so in varying degrees of specificity.

[3] 35 U.S.C. section 314(d) reads in relevant part that the patent office’s “determination… whether to institute an inter partes review under this section shall be final and non-appealable.”

[4] In Cuozzo, a party contended that the Board should have refused to institute IPR, because the opposing party’s petition did not meet section 312(a)(3) requirement for patent challenges be identified with particularity. The Court disagreed and held that section 314(d) was sufficiently clear to overcome the “strong presumption in favor of judicial review” quoting Mach Mining, LLC. v EEOC, 575 U.S. 480, 486 (2015).

[5] Section 314(a) reads in relevant part that” The Director may not authorize an inter partes review …unless… there is a reasonable likelihood that the petitioner would prevail.”

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