Term: 2019
Docket: 18-916
Thryv v. Click-to-call Technologies, Lp
- Pro
18-916 THRYV, INC. V. CLICK-TO-CALL TECHNOLOGIES DECISION BELOW: 899 F3d 1321 GRANTED LIMITED TO QUESTION 1 PRESENTED BY THE PETITION. CERT. GRANTED 6/24/2019 QUESTION PRESENTED: The America Invents Act created "inter partes review" ("IPR"), an agency procedure for challenging a patent before the Patent Trial and Appeal Board ("PTAB"). The statute has two provisions relevant here, each of which was interpreted by a divided Federal Circuit sitting en banc. First, 35 U.8.C. § 315(b) provides that "[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner ... is served with a complaint alleging infringement of the patent." Second, § 314(d) provides that "[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable." In a recent case, the en banc Federal Circuit held (with four dissenters) that, notwithstanding§ 314(d), a PTAB decision to institute an IPR after finding that the § 315(b) time bar did not apply was appealable. The panel applied that ruling in this case. Then, the en banc Federal Circuit, again divided (with two dissenters), held in this case that service of a patent infringement complaint that is later dismissed without prejudice triggers the§ 315(b) time bar. The questions presented are: 1. Whether 35 U.8.C. § 314(d) permits appeal of the PTAB's decision to institute an inter partes review upon finding that§ 315(b)'s time bar did not apply. 2. Whether 35 U.8.C. § 315(b) bars institution of an inter partes review when the previously served patent infringement complaint, filed more than one year before the IPR petition, had been dismissed without prejudice. LOWER COURT CASE NUMBER: 2015-1242
The U.S. Supreme Court case Thryv v. Click-to-Call Technologies, LP in 2019 revolved around the issue of whether a decision by the Patent Trial and Appeal Board (PTAB) to institute an inter partes review proceeding is judicially unreviewable under 35 U.S.C §314(d). The PTAB had invalidated several patents owned by Click-To-Call Technologies on grounds that they were obvious variations of prior inventions, following a petition from Thryv Inc., formerly known as Dex Media Inc. However, Click-To-Call argued that the board's decision was time-barred due to a lawsuit filed more than a year before Thryv requested for review. In its ruling, the Supreme Court held that such decisions are indeed non-reviewable even if based on an erroneous assessment of timeliness under Section 315(b), thus siding with Thryv and affirming the Federal Circuit court’s judgment.
In the dissenting opinion for THRYV v. CLICK-TO-CALL TECHNOLOGIES, LP, Justice Gorsuch argued that the majority's decision undermines the role of federal courts in protecting patent rights. He contended that Congress did not intend to bar judicial review of Patent Trial and Appeal Board decisions on time-bar issues when it enacted America Invents Act (AIA). According to him, this interpretation is inconsistent with both statutory text and historical practice. Furthermore, he expressed concern about allowing an executive agency like PTAB unchecked power over its own decisions without any possibility of judicial oversight or intervention. This could potentially lead to unfairness and inconsistency in patent law enforcement which would be detrimental to inventors' confidence in their intellectual property rights protection.
