SCOTUS expands PTAB’s ‘unchecked’ power over patent reviews
The US Supreme Court’s ruling in Thryv v Click-to-Call effectively leaves the Patent Trial and Appeal Board with “unchecked authority” over decisions to institute patent reviews, lawyers have told WIPR.
The country’s top court ruled yesterday, April 20 that the PTAB’s decision on whether a patent validity challenge was time-barred could not be appealed to the US Court of Appeals for the Federal Circuit.
The Federal Circuit handles appeals originating from US Patent and Trademark Office (USPTO) proceedings, which includes the PTAB and an equivalent board for trademarks.
But yesterday’s ruling indicates that the Supreme Court wants to limit which appeals the Federal Circuit will and won’t hear, lawyers have said.
In particular, the decision seems to protect the PTAB’s so-called institution decisions, on whether to institute an inter partes review (IPR) in the first place, from appeal.
Click-to-Call had argued that the PTAB should not have instituted IPR of its patent, because the request to do so, filed by Thryv, was time-barred.
The IPR resulted in the cancellation of several claims of Click-to-Call’s patent.
Aziz Burgy, partner at Axinn, said the ruling did not come as a surprise, given the court’s previous rulings on the appealability of institution decisions.
“Its ramifications, however, may raise concerns for others because it leaves ultimate and sole adjudicatory power with the PTAB on such decisions,” Burgy said, adding: “In essence, the PTAB has unchecked authority over its time-bar decisions.”
Speaking to WIPR, John Lu, partner at Milbank, said that, “ultimately, the ruling suggests that almost all USPTO decisions concerning institution will be unappealable”.
Tom King, partner at Haynes and Boone, agreed, commenting that the “Supreme Court does not want the Federal Circuit reviewing any aspect of PTAB institution decisions, save perhaps in the rarest of cases”.
The bench’s decision was not unanimous, with Justice Neil Gorsuch writing that the majority’s ruling “carries us another step down the road of ceding core judicial powers to agency officials and leaving the disposition of private rights and liberties to bureaucratic mercy”.
Gorsuch’s dissenting opinion reflects more fundamental concerns over the PTAB and the extent of its power. The agency, established in the 2012 America Invents Act, has been seen by some as endangering the patent rights of innovators.
“Today the court takes a flawed premise—that the constitution permits a politically guided agency to revoke an inventor’s property right in an issued patent—and bends it further, allowing the agency’s decision to stand immune from judicial review,” Gorsuch wrote.
But the Supreme Court majority’s ruling can be seen as an endorsement of the PTAB’s original brief, to weed out “bad patents” from the system, Lu said.
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