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Thryv, Inc. v. Click-to-Call Technologies, LP

No Judicial Review for IPR Time Bar Decisions at Institution

Thryv, Inc. v. Click-to-Call Technologies, LP, __ U.S. __, 2020 WL 1906544 (Apr. 20, 2020) (Opinion by GINSBURG, J.; Dissenting opinion by Gorsuch, J.) (Fed Cir: O’MALLEY, Taranto, Stark) (PTAB) (5 of 5 stars)

Supreme Court vacates Fed Cir’s judgment (899 F.3d 1321 (Fed. Cir. 2018)) and remands for dismissal of the appeal. The Fed Cir erred by holding PTAB determinations relating to the IPR time bar of § 315(b) judicially reviewable. Appeals based on § 315(b) raise “ordinary dispute[s] about the application of an institution-related statute.” Op. at 8 (quote marks omitted). The opinion reasons that permitting § 315(b) appeals would contravene the AIA’s structural orientation towards efficiency, and describes how AIA’s general structure “confirm[s] that Congress prioritized patentability over § 315(b)’s timeliness requirement.” Id. at 9. Cuozzo, 579 U.S. ___ (2016), does not restrict the AIA’s bar on IPR judicial review to the PTAB’s determinations concerning the likelihood of the petitioner prevailing. “The Court’s opinion in Cuozzo explained that the [appeal] bar extends to challenges grounded in ‘statutes related to’ the institution decision.” Op. at 10 (quoting Cuozzo, slip op. at 11). SAS Institute, 584 U.S. ___ (2018), is also not contrary because that opinion addressed the judicial power to review how an IPR “‘proceeds’ once instituted, [and not] whether the agency should have instituted review at all.” Op. at 12. In a footnote, the opinion rejects the dissent’s contention that Cuozzo’s extension of the appeal bar to related statutory challenges was dicta that SAS Industries repudiated. That the PTAB’s final written decision addressed the § 315(b) issue also did not make it judicially reviewable.

The Court’s opinion was authored by Justice Ginsburg and joined by Chief Justice Roberts and Justices Breyer, Kagan, and Kavanaugh. Justices Thomas and Alito join except for Section III-C (i.e., the discussion of how AIA’s purpose, structure, and design support the Court’s decision).

Dissent: Justice Gorsuch would have held that § 315(b) issue judicially reviewable. In his view, the result of the Court’s opinion is to improperly “permit[ ] a politically guided agency to revoke an inventor’s property right in an issued patent” and to allow that revocation to “stand immune from judicial review.” Op. at 1. His opinion discusses the case history and statutory structure, and reasons that § 314(d)’s bar on judicial review extends only to determinations “within § 314,” i.e., the determination of whether the petitioner is reasonably likely to prevail. It also discusses the general presumption toward judicial review where possible, and criticizes Thryv and the Court’s interpretation of Cuozzo and SAS Institute. It concludes by expressing concern about the absence of oversight should the Patent Office misapply its AIA authority.

Justice Gorsuch’s opinion is joined by Justice Sotomayor except for Section V (which expressed concerns about the lack of judicial oversight for the Patent Office).

KEYWORDS: INTER PARTES REVIEW; TIME BAR; INSTITUTION DECISION; JUDICIAL REVIEW