The US Supreme Court Prohibits Parties from Appealing Untimeliness Challenges in IPRs
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In a 7-2 decision written by Justice Ginsburg, the U.S. Supreme Court, in Thryv, Fka Dex Media v. Click-To-Call Techs., No. 18-916, 2020 U.S. LEXIS 2406 (2020), held that the Patent Trial and Appeal Board's ("Board") decision on whether an inter partes review ("IPR") petition is untimely under 35 U.S.C. § 315(b) is not appealable under 35 U.S.C. § 314(d).
The Proceedings Below
In the IPR proceeding, the Board instituted review of a petition that was filed more than one year after the patent owner sued the petitioner for infringement of the challenged patent. Under § 315(b), trial will not be instituted if the petition is filed more than one year after the date on which the petitioner was served with a complaint alleging infringement. In this case, however, the Board concluded that § 315(b)'s one-year limit was not triggered because the complaint was dismissed without prejudice. After institution, the Board issued a final written decision canceling numerous claims of the challenged patent as obvious or lacking novelty. The patent owner appealed, challenging only the Board's § 315(b) determination. On appeal, the petitioner argued that § 314(d) – a provision that provides that the Director's decision on "whether to institute an inter partes review under this section shall be final and nonappealable" – precluded judicial review of the Board's application of § 315(b). The Federal Circuit disagreed with the petitioner, finding that the Board erred by instituting review because the infringement claim, although dismissed without prejudice, started the one-year clock under § 315(b). The Supreme Court granted certiorari.
The Majority Opinion
The Supreme Court majority held § 314(d) bars judicial review of the Board's decision under § 315(b). The Court first defined the scope § 314(d). Id. at *10-12. Relying on its decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), the Court determined that § 314(d) applies when the grounds for challenging the institution decision are "closely tied to the application and interpretation of statutes related to" the Board's decision to institute an IPR. Thryv, at *12. Applying this interpretation to § 315(b), the Court found that § 314(d) overcomes the presumption favoring judicial review since a timeliness challenge under § 315(b) is effectively a contention that the Board should have refused institution. Id. at *12-13. The Court also noted that policies concerning overpatenting and the destruction of bad patent claims, which underlie the purpose of IPR proceedings, reinforced its conclusion. Id. at *13-15.
The Dissenting Opinion
Justice Gorsuch, joined in part by Justice Sotomayor, dissented from the majority opinion by offering a much narrower interpretation of § 314(d). Agreeing with the patent owner, Justice Gorsuch argued that § 314(d) should only insulate from judicial review decisions made by the Director according to provisions within § 314 and not from interpretations of other provisions outside this section, including those involving § 315(b). Id. at *29-30. Unlike the language of § 314(d), which provides that the Director's decisions "under this section" are final and nonappealable, the text in § 315(b) contains nothing on whether the Board's ruling on a petition's timeliness is "final and nonappealable." Id. at *31. Further, Justice Gorsuch also disagreed that the Court's holdings in Cuozzo and SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018) on the issue support the petitioner and the majority's interpretation of § 314(d). Id. at *43-48.
The majority's interpretation of § 314(d) invites the question of what other grounds for challenging an institution decision would be considered "closely tied to the application and interpretation of statutes related to" the Board's decision to institute an IPR. While the Court explained that the manner in which the IPR proceeds once instituted is reviewable, the Court suggests that any grounds challenging the Board's determination on whether an IPR should have instituted at all is not reviewable. See id. at *19.
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