With this decision, the US Supreme Court again prioritizes giving the US Patent and Trademark Office (PTO) a second chance to review and potentially weed out “bad patents,” over permitting parties the opportunity to challenge the PTO’s decision to institute an inter partes review (IPR). As a result, patent owners cannot challenge the PTO’s determination that an IPR petition is or is not time barred. This decision could also streamline issues for appeal.
In its ruling Monday in Thryv, Inc. v. Click-to-Call Techs, LP., the Supreme Court further constricted appellate review of Patent Trial and Appeal Board (PTAB) determinations under 35 USC § 314(d). The Court held that this statute—under which “[t]he determination by the [PTO] Director whether to institute an inter partes review. . .shall be final and nonappealable”—also applies to PTAB decisions regarding whether the one-year time bar applies to a given petition. Consequently, PTAB decisions on whether or not IPR petitions are time-barred are not subject to appellate review.
This ruling directly follows from the Court’s previous interpretation of § 314(d) in its 2016 Cuozzo Speed Techs, LLC v. Lee ruling. There, the Court foreclosed judicial review of IPR institution decisions, explaining that:
our interpretation applies where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office's decision to initiate inter partes review.[1]
Likewise, the Court here reasoned that the “application of §315(b)’s time limit . . . is closely related to its decision whether to institute inter partes review.”[2] “Section 315(b)’s time limitation is integral to, indeed a condition on, institution. After all, § 315(b) sets forth a circumstance in which ‘[a]n inter partes review may not be instituted.’”[3] “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.’”[4]
If you have any questions or would like more information on the issues discussed in this LawFlash, please contact the author Michael T. Sikora (Chicago) or any of the following lawyers from Morgan Lewis’s post-grant proceedings team:
Boston
Joshua M. Dalton
Century City
Andrew V. Devkar
Chicago
Jason C. White
Houston
C. Erik Hawes
Rick L. Rambo
Philadelphia
Louis W. Beardell, Jr.
San Francisco
Brent A. Hawkins
Silicon Valley
Dion M. Bregman
Andrew J. Gray IV
Michael J. Lyons
Washington, DC
Jeffrey G. Killian, Ph.D.
Robert Smyth, Ph.D.