In its decision in Thryv Inc. v. Click-To-Call Technologies LP, the U.S. Supreme Court confirmed broad discretionary power for the Patent Trial and Appeal Board (PTAB) in instituting inter partes reviews (IPRs).
Despite this discretion, however, the PTAB remains reluctant to exercise its discretionary powers. In one area, joinder under 35 U.S.C. ' 315(c), the PTAB exercises its discretionary power less frequently'even when instituting may minimize burdensome overlap between the PTAB and district court. Thryv may lead to increases in discretionary institutions for at least joinder petitions with potential Section 315 statutory bars.
The Supreme Court held that PTAB decisions exercising discretionary power to institute IPRs under Section 314(d) are nonappealable, despite time bars under Section 315.
The court found that 'Congress prioritized patentability' over the Section 315 timeliness requirements, and that bars under Section 315 do not preclude the PTAB from reviewing challenged claims on the merits. The court further noted that the purpose of Section 315 is to 'minimize burdensome overlap between inter partes review and patent infringement litigation.'
The PTAB likewise acknowledges this goal of minimizing undue burden in at least the March 2019 precedential opinion panel (POP) decision in Proppant Express. Proppant Express Invs. LLC v. Oren Techs. LLC, No. IPR2018-00914, paper 38 (P.T.A.B. March 13, 2019).
There, the panel...
