Legal Alert: Supreme Court Rules § 315(b) Time Bar Decisions Are Not Appealable in Thryv v. Click-to-Call
The Supreme Court ruled today in Thryv, Inc. v. Click-to-Call Technologies, LP that decisions that an inter partes review petition was timely filed cannot be appealed. In a 7-2 decision penned by Justice Ginsburg, the Court held that since the America Invents Act (AIA) states that PTAB decisions instituting review are "final and nonappealable," appellate review for any matters "closely tied" to such decisions is similarly unavailable. A time bar challenge "easily meets that measurement," Justice Ginsburg wrote.
Under § 314(d) of the AIA, a party to an inter partes review proceeding generally cannot contend on appeal that the agency should have refused to institute proceedings. In Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. ___, the Court stated that § 314(d) precludes review of the Patent Office's institution decisions "where the grounds for attacking the decision to institute 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." The question here was whether a challenge based on § 315(b) can be considered an appeal of the agency's decision to institute inter partes review.
§ 315(b) prohibits the institution of inter partes review proceedings if the petition requesting the proceedings is filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The Court found that the language of § 315(b) "expressly governs institution and nothing more." Such determinations thus easily meet the Cuozzo standard of being "closely tied" to the agency's decision to institute inter partes review proceedings. Justice Ginsburg wrote further that this conclusion is "strongly reinforced by the statute's purpose and design," since Congress designed inter partes review to weed out bad patent claims efficiently. In her view, "[a]llowing § 315(b) appeals...would unwind agency proceedings determining patentability and leave bad patents enforceable."
Justice Gorsuch, in a dissenting opinion, would have held that § 315(b) determinations are 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." His opinion discusses the case history and statutory structure, reasoning 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.
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