Thryv, Inc. v. Click-To-Call Techs., LP

140 S.Ct. 1367

206 L.Ed.2d 554

THRYV, INC., fka Dex Media, Inc., Petitioner

v.CLICK-TO-CALL TECHNOLOGIES, LP, et al.

No. 18-916

Supreme Court of the United States.

Argued December 9, 2019

Decided April 20, 2020

Mitchell G. Stockwell, Thurston Webb, Amanda N. Brouillette, Kilpatrick Townsend, & Stockton LLP, Atlanta, GA, Shannon Straw, Thryv, Inc., Glendale, CA, Adam H. Charnes, Jason P. Steed, Kilpatrick Townsend, & Stockton LLP, Dallas, TX, for Petitioner.

Noel J. Francisco, Solicitor General, Department of Justice, Washington, DC, for Respondent.

Justice GINSBURG delivered the opinion of the Court.^*

Inter partes review is an administrative process in which a patent challenger may ask the U.S. Patent and Trademark Office (PTO) to reconsider the validity of earlier granted patent claims. This case concerns a statutorily prescribed limitation of the issues a party may raise on appeal from an inter partes review proceeding.

When presented with a request for inter partes review, the agency must decide whether to institute review. 35 U.S.C. § 314. Among other conditions set by statute, if the request comes more than a year after suit against the requesting party for patent infringement, "[a]n inter partes review may not be instituted." § 315(b). "The determination by the [PTO] Director whether to institute an inter partes review under this section shall be final and nonappealable." § 314(d).^†

In this case, the agency instituted inter partes review in response to a petition from Thryv, Inc., resulting in the cancellation of several patent claims. Patent owner Click-to-Call Technologies, LP, appealed, contending that Thryv's petition was untimely under § 315(b).

The question before us: Does § 314(d)'s bar on judicial review of the agency's decision to institute inter partes review preclude Click-to-Call's appeal? Our answer is yes. The agency's application of § 315(b)'s time limit, we hold, is closely related to its decision whether to institute inter partes review and is therefore rendered nonappealable by § 314(d).

I

The Patent and Trademark Office has several ways "to reexamine—and perhaps cancel—a patent claim that it had previously allowed." Cuozzo Speed Technologies , LLC v. Lee , 579 U.S. ––––, ––––, 136 S.Ct. 2131, 2137, 195 L.Ed.2d 423 (2016). Congress established the procedure at issue here, inter partes review, in the Leahy-Smith America Invents Act (AIA), 125 Stat. 284, enacted in 2011. See 35 U.S.C. § 311 et seq. Inter partes review allows third parties to challenge patent claims on grounds of invalidity specified by statute. § 311(b).

For inter partes review to proceed, the agency must agree to institute review. § 314. Any person who is not the patent's owner may file a petition requesting inter partes review. § 311(a). The patent owner may oppose institution of inter partes review, asserting the petition's "failure ... to meet any requirement of this chapter." § 313.

The AIA sets out prerequisites for institution. Among them, "[t]he Director may not authorize an inter partes review to be instituted unless the Director determines ... that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition." § 314(a). Most pertinent to this case, "[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed 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." § 315(b).

After receiving the petition and any response, the PTO "Director shall determine whether to institute an inter partes review under this chapter." § 314(b). The Director has delegated institution authority to the Patent Trial and Appeal Board (Board). 37 CFR § 42.4(a) (2019). As just noted, the federal agency's "determination ... whether to institute an inter partes review under this section" is "final and nonappealable." 35 U.S.C. § 314(d).

Upon electing to institute inter partes review, the Board conducts a proceeding to evaluate the challenged claims' validity. See § 316. At the conclusion of the proceeding—if review "is instituted and not dismissed"—the Board "issue[s] a final written decision with respect to the patentability of" the challenged claims. § 318(a). "A party dissatisfied with the final written decision ... may appeal the decision" to the Court of Appeals for the Federal Circuit. § 319.

II

Respondent Click-to-Call owns a patent relating to a technology for anonymous telephone calls, U.S. Patent No. 5,818,836 ('836 patent). In 2013, petitioner Thryv sought inter partes review, challenging several of the patent's claims.³

In opposition, Click-to-Call urged that § 315(b) barred institution of inter partes review because Thryv filed its petition too late. Click-to-Call pointed to an infringement suit filed in 2001, which ended in a voluntary dismissal without prejudice.⁴ In Click-to-Call's view, that 2001 suit started § 315(b)'s one-year clock, making the 2013 petition untimely.

The Board disagreed. Section 315(b) did not bar the institution of inter partes review, the Board concluded, because a complaint dismissed without prejudice does not trigger § 315(b)'s one-year limit. Finding no other barrier to institution, the Board decided to institute review. After proceedings on the merits, the Board issued a final written decision reiterating its rejection of Click-to-Call's § 315(b) argument and canceling 13 of the patent's claims as obvious or lacking novelty.

Click-to-Call appealed, challenging only the Board's determination that § 315(b) did not preclude inter partes review. The Court of Appeals dismissed the appeal for lack of jurisdiction, agreeing with Thryv and the Director (who intervened on appeal) that § 314(d)'s bar on appeal of the institution decision precludes judicial review of the agency's application of § 315(b). Citing our intervening decision in Cuozzo , see infra , at 1372 - 1373, we granted certiorari, vacated the judgment, and remanded. Click-to-Call Technologies, LP v. Oracle Corp. , 579 U.S. ––––, 136 S.Ct. 2508, 195 L.Ed.2d 837 (2016). On remand, the Court of Appeals again dismissed the appeal on the same ground.

Thereafter, in another case, the en banc Federal Circuit held that "time-bar determinations under § 315(b) are appealable" notwithstanding § 314(d). Wi-Fi One, LLC v. Broadcom Corp. , 878 F.3d 1364, 1367 (2018). The majority opinion construed § 314(d)'s reference to the determination whether to institute inter partes review "under this section" as trained on the likelihood-of-success requirement stated in § 314(a). Id. , at 1372. The § 315(b) timeliness determination, the majority concluded, "is not ‘closely related’ to the institution decision addressed in § 314(a)." Id. , at 1374 (quoting Cuozzo , 579 U.S., at ––––, 136 S.Ct., at 2142 ). The majority therefore held that for § 315(b) appeals, § 314(d) does not displace the usual presumption favoring judicial review of agency action. Wi-Fi One , 878 F.3d at 1374–1375. In a concurring opinion, Judge O'Malley emphasized a "simpler" basis for the same conclusion. Id. , at 1375. In her view, § 314(d) shields from review only the agency's assessment of a petition's "substantive adequacy," not questions about the agency's "authority to act." Id. , at 1376.

Judge Hughes, joined by Judges Lourie, Bryson, and Dyk, dissented, expressing a position that today's dissent characterizes as "extraordinary." Post , at 1380 - 1381. Those judges concluded that § 314(d) conveys Congress' "clear and unmistakable" "intent to prohibit judicial review of the Board's [inter partes review] institution decision." Wi-Fi One , 878 F.3d at 1378. That prohibition applies to § 315(b) issues, the Federal Circuit dissenters maintained, because § 315(b) "describes when an [inter partes review] may be ‘instituted.’ " Id. , at 1377, 1378–1379 (quoting § 315(b)).

In light of its en banc decision in Wi-Fi One , the Court of Appeals granted panel rehearing in this case. Treating the Board's application of § 315(b) as judicially reviewable, the panel's revised opinion held that the Board erred by instituting review. The petition for inter partes review here was untimely, the Court of Appeals held, because the 2001 infringement complaint, though dismissed without prejudice, started the one-year clock under § 315(b).⁵ The court therefore vacated the Board's final written decision, which had invalidated 13 of Click-to-Call's claims for want of the requisite novelty and nonobviousness, and remanded with instructions to dismiss.

We granted certiorari to resolve the reviewability issue, 587 U.S. ––––, 139 S.Ct. 2742, 204 L.Ed.2d 1129 (2019), and now vacate the Federal Circuit's judgment and remand with instructions to dismiss the appeal for lack of appellate jurisdiction.

III

A

To determine whether § 314(d) precludes judicial review of the agency's application of § 315(b)'s time prescription, we begin by defining § 314(d)'s scope. Section 314(d)'s text renders "final and nonappealable" the "determination by the Director whether to institute an inter partes review under this section." § 314(d) (emphasis added). That language indicates that a party generally cannot contend on appeal that the agency should have refused "to institute an inter partes review."

We held as much in Cuozzo . There, a party contended on appeal that the agency should have refused to institute inter partes review because the petition failed § 312(a)(3)'s requirement that the grounds for challenging patent claims must be identified "with particularity." 579 U.S., at ––––, 136 S.Ct., at 2139 (internal quotation marks omitted). This "contention that the Patent Office unlawfully initiated its agency review is not appealable," we held, for "that is what § 314(d) says." Id. , at ––––, 136 S.Ct., at 2139. Section 314(d), we explained, "preclud[es] review of the Patent Office's institution decisions" with sufficient clarity to...