Recent Developments in Intellectual Property Law 2021


Sheila Swaroop

Knobbe Martens
2040 Main St., 14th floor
Irvine, CA 92614
[email protected]


Matt Friedrichs

Knobbe Martens
1155 Avenue of the Americas, 24th Floor
New York, NY 10036
[email protected]

Mack Montgomery

Knobbe Martens
1717 Pennsylvania Avenue N.W., Suite 900
Washington, D.C. 20006
[email protected]

David O’Hair

Knobbe Martens
925 Fourth Avenue, Suite 2500
Seattle, WA 98104
[email protected]

Radhika Raman

Knobbe Martens
2040 Main St., 14th floor
Irvine, CA 92614
[email protected]

Alexander Zeng

Knobbe Martens
1925 Century Park East, Suite 600
Los Angeles, CA 90067
Alexander [email protected]

§ 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 …

This is premium content for:

ABA Business Law Section Members.

Please log in or join the Business Law Section to read this full article.

For more information about joining the Section, click here.


Connect with a global network of over 30,000 business law professionals


Login or Registration Required

You need to be logged in to complete that action.