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§ 1.1 Patent Case
§ 1.1.1 Supreme Court decisions
Thryv, Inc. v. Click-to-Call Techs., LP, 140 S.Ct. 1367 (2020)
Facts: This case concerns whether a party may appeal a decision by the Patent Trial and Appeal Board (“Board”) as to whether institution of inter partes review is permissible under 35 U.S.C. § 315(b)’s “time bar” provision.
Click-to-Call owns a patent claiming technology for anonymous phone calls. In 2001, the exclusive licensee of Click-to-Call’s patent sued a predecessor of Thryv for patent infringement. The suit was voluntarily dismissed without prejudice. Twelve years later, in 2013, Thryv petitioned the Board to institute inter partes review of the patent. In opposing the petition, Click-to-Call argued that the prior 2001 lawsuit triggered § 315(b)’s time bar on the institution of inter partes review, which prohibits review “if the petition requesting the proceeding 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.” 35 U.S.C. § 315(b).
The Board rejected Click-to-Call’s argument and instituted inter partes review, holding that § 315(b)’s time bar did not apply when a complaint is dismissed without prejudice. The Board decided the merits of the inter partes review, and Click-to-Call appealed to the Federal Circuit. The Federal Circuit dismissed the appeal for lack of jurisdiction, holding that 35 U.S.C. § 314(d)’s bar on appeal of the Board’s institution decisions precludes judicial review of the Board’s application of § 315(b). After the Supreme Court addressed the scope of § 314(d) in Cuozzo Speed Technologies v. Lee, 136 S. Ct. 2131 (2016), however, the Court granted certiorari, vacated the judgment, and remanded to the Federal Circuit.
The Federal Circuit panel reached the same decision on remand, but after a split court decided en banc in another case that time-bar determinations under § 315(b) are appealable, the Click-to-Call panel granted panel rehearing and held that the Board should have declined to institute the inter partes review because the 2001 patent infringement complaint triggered § 315(b)’s one-year time bar. Thryv then filed a petition for certiorari, and the Supreme Court granted review.
Held: The Board’s decision as to whether institution of inter partes review is time-barred by § 315(b) is final and not appealable.
Reasoning: The Court held that § 315(b)’s time limitation on the filing of a petition for institution of inter partes review provides an integral condition on institution. The Court noted that the language of § 315(b) itself provides a circumstance in which “[a]n inter partes review may not be instituted.” Because § 315(b) merely places a condition on institution, disputes about …
