Earlier this year, in Thryv Inc. v. Click-to-Call Technologies LP,1 the U.S. Supreme Court held that parties cannot appeal Patent Trial and Appeal Board determinations of whether a petition is timely in an inter partes review, reversing the en banc U.S. Court of Appeals for the Federal Circuit.
At institution, the PTAB must apply a statutory one-year time bar: If the patent owner has filed and served an infringement suit against the petitioner more than one year before the IPR is filed, the petition is time-barred and dismissed. Thryv clarifies that once the PTAB determines that the petition is time-barred or not, the decision cannot be appealed to the Federal Circuit.
Thryv follows another Supreme Court patent case, Cuozzo Speed Technologies LLC v. Lee, further limiting appellate review of decisions closely tied to the decision to institute. Thryv and Cuozzo form two important points on a line, one that trends toward broader discretion for the PTAB to apply procedural bars without the possibility of appeal.
Perhaps taking a cue from the Supreme Court, the Federal Circuit and PTAB have recently questioned if Thryv should extend to other Federal Circuit decisions - perhaps those cases should never have been appealed. Without appellate review, the PTAB acquires broad discretion over the application of procedural bars like the one-year time bar.
In Thryv, the court addressed whether PTAB decisions made under Title 35 of the U.S. Code, Section 315(b), can be judicially reviewed, where judicial review refers to review before the Federal Circuit rather than an administrative agency like the PTAB.2 That section the filing of an IPR "more than 1 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."3
In 2013, Thryv filed an IPR against Click-to-Call's patent; Click-to-Call responded that the challenge was time-barred under Section 315(b) because of an infringement suit served against Thryv's predecessor in 2001.4 The PTAB sided with Thryv, finding the one-year bar did not apply because the 2001 suit was voluntarily dismissed without prejudice.5 The PTAB reiterated this point in the final written decision and ultimately cancelled 13 of Click-to-Call's claims.6
Click-to-Call appealed. Thryv and the U.S. Patent and Trademark Office argued that the statutory construction of Section 315(b) favored tolling the one-year bar from the service of a suit dismissed without prejudice.7
The Federal Circuit stated the one-year bar was appealable, relying on a separate case, Wi-Fi One LLC v. Broadcom Corp.8 Considering the issue before it, the en banc Federal Circuit held the one-year bar should apply even if the suit is later dismissed, and thus it instructed the board to dismiss the "long-marooned case."9
The Supreme Court granted Thryv's petition for writ of certiorari. In a 7-2 vote vacated the Federal Circuit's decision, holding that Section 314(d) prohibits appeal of PTAB decisions regarding the one-year bar.10 In doing so, the majority relied on Cuozzo, which held that decisions concerning the reasonable likelihood of success of the petition cannot be appealed.11
Like the statutory sections at issue in Cuozzo, the majority reasoned that the one-year bar under Section 315(b) is "'closely tied to the application and interpretation of statutes related to' the institution decision," and, as such, also cannot be appealed.12
Writing for the majority, Justice Ruth Bader Ginsburg further pointed to concerns over judicial efficiency and a need to "weed out bad patent claims," but did leave open the possibility of mandamus petitions for "extraordinary cases."13
Aftermath
Thryv ultimately prevailed at the Supreme Court, avoiding the one-year bar and achieving the cancellation of CTC's claims.14 However, subsequent PTAB action indicates a willingness to maintain the status quo and enforce the one-year bar going forward. Leading up to Thryv, the USPTO acknowledged the original panel was wrong on the merits.15
The PTAB has since demoted the original Click-to-Call board decision from precedential to nonprecedential "in view of the [PTAB's] Precedential Opinion Panel (POP) decision in GoPro, Inc. v. 360Heros, Inc." - a decision in which the board denied institution as time-barred under Section 315(b).16
In GoPro, the PTAB considered whether a deficient counterclaim filed more than one-year before the IPR triggered the...
