Can Late IPR Petitions Be Appealed? Analyzing the Supreme Court's Oral Argument in Thryv, Inc. v. Click-to-Call Technologies
On December 9, 2019, the Supreme Court heard oral arguments in Thryv, Inc. v. Click-to-Call Technologies, Case No. 18-916. The case involves the proper application of Section 315(b) of the American Invents Act (AIA) to determine whether an application for an inter partes review (IPR) is time-barred from an appeal. The issue is whether a party can appeal a Patent and Trial Appeal Board (PTAB) ruling of a time bar, or whether it is unappeable. The time bar of Section 315(b) prevents an IPR petition from being filed more than one year after the patent owner had served the petitioner with a complaint for patent infringement.
Thryv, the petitioner, argued that there should be no ability to appeal the time-bar in Section 315(b). Thryv pointed to Section 314(d)'s statement that the decision of whether to institute an IPR cannot be judicially reviewed, combined with the entire text and intent of Section 314, precludes judicial review of the PTO's determination that an inter partes review application is time-barred under Section 315(b).
Thryv relied on the Supreme Court's prior decision in Cuozzo Speed Technologies v. Lee, 136 S. Ct. 2131 (2016), along with the text of the American Invents Act (AIA) and its legislative history, citing various examples in Sections 313 and 314. Thryv argues that Congress drafted the time-bar to apply to "the determination of whether to institute an inter partes review" under 314(d), arguing that the text itself confirms this intent to expand the appeal bar to the institution decision as a whole. Thryv argued that the prior Cuozzo decision, although dealing with Section 312(a)(3), held that Section was also subject to the appeal bar in Section 314(d).
The Justices asked Thryv only a few questions. Justices Kavanaugh and especially Gorsuch challenged Thryv's position that Section 315(b) gave no opportunity to challenge an appeal bar decision. In response to Justice Ginsberg's question as to how this issue relates to the SAS Institute v. Iancu decision, Thryv distinguished SAS by saying that the PTO is prohibited from reviewing only some of the challenged claims and not all of the challenged claims under Section 318, which it considers a "merits" statute different from the one at issue here that deals only with procedure.
Click-to-Call (CTC), the respondent, had the tougher argument. CTC argued that the petitioner's position is inconsistent with the text of Section 314(d), Cuozzo and the AIA. CTC argued that Section 314(d) should not be applied to Section 315(b) because it relates to a "merits" decision of whether to institute, not to a procedural question of a time-bar under Section 315(b). CTC argued that precluding review of a 315(b) decision improperly prevents that petition from being considered on its merits. Justice Gorsuch appeared to agree with this view, questioning how an IPR could effectively be doomed by the time-bar. CTC claimed that it could properly synthesize its position with Cuozzo and SAS because they were both limited to the specific portions of the AIA statute as to what was precluded from further review, and were not speaking to Section 315(b). CTC emphasized that a reading of 315(b) by itself without incorporating other sections favors the appealability of a time-bar. CTC emphasized that Section 315(b) drastically changed the prior standard under Section 312(c) and was final and non-appealable, which is missing from Section 315(b)'s express language.
In addressing questions from other participants who sought appeal of a ruling on the time-bar, the Justices appeared to question the basis for allowing appeal of a Section 315(b) time-bar. Chief Justice Roberts pushed back against the idea that Section 315(b)'s time-bar should be the subject of further litigation, because there are many other ways for the petitioner to challenge a patent. Chief Justice Roberts also humorously commented that a time-bar challenge was not "what we were fighting over at Yorktown," downplaying its importance. Justice Kagan similarly chimed in that another petitioner who was not time-barred could also bring an IPR. Justice Breyer later stated that "you get one appeal," and that there should not be review of filing late. Although previously questioning both sides critically, Justice Gorsuch seemed to summarize the Court's thinking, stating "what's the big deal?" The Justices were adamant that there were other ways to review the invalidity of a patent, including through an ex parte re-examination at the Patent Office.
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