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10 December 2019PatentsSaman Javed

SCOTUS Thryv ruling could undermine inter partes reviews: lawyers

A long-running dispute over whether a US Patent Trial and Appeal Board’s (PTAB) decision to institute an inter partes review (IPR) is appealable could undermine the proceeding’s bedrock policies, lawyers told WIPR.

The US Supreme Court ( SCOTUS) is to rule on whether a decision to institute an IPR can be appealed if the review was instituted more than one year after a patent infringement claim (which has since been dismissed) was filed.

Yesterday, December 9, SCOTUS heard oral arguments in Thryv v Click-to-Call, a case which is expected to “test the limits of the no-appeal statute”, says Hersh Mehta, partner at Morgan Lewis.

“If SCOTUS affirms the US Court of Appeals for the Federal Circuit’s decision, then at least patent owners could have an appellate avenue to challenge the PTAB’s time-bar determinations.

“If SCOTUS reverses, then it will return to the status quo, ie, no appeals from institution-related determinations,” Mehta said.

The case concerns section 35 USC 314(d) of US patent law, which states that the PTAB’s decision whether to institute an IPR is final and non-appealable.

The dispute dates to 2001, when Inforocket.com sued Keen Inc for patent infringement before it voluntarily dismissed the suit.

In 2012, Click-to-Call acquired the patent asserted by Inforocket.com. Click-to-Call then filed a patent infringement action against Ingenio, a company that was formed through a merger of Inforocket.com and another company, Keen.

Ingenio filed for an IPR, but this was challenged by Click-to-Call on the basis that it had been filed more than a year after the patent infringement claim against Keen.

Ingenio later merged with Dex Media, which then merged with another company, SuperMedia, to form Thryv.

In August 2018, the Federal Circuit ruled that even though the original patent claim had been voluntarily dismissed, the IPR time bar still applies, as reported by WIPR.

Thryv appealed to SCOTUS, which yesterday heard oral arguments. Irena Royzman, a partner at Kramer Levin who filed an amicus brief in support of Click-to-Call, said it was unclear from the arguments whether SCOTUS will affirm the Federal Circuit’s decision.

However, Royzman explained: “If the court reverses the Federal Circuit, USPTO decisions that disregard or violate the statutory time bar will be immune from judicial review.”

Karen Sebaski, counsel at Holwell Shuster & Goldberg, said it was important for SCOTUS to consider the extent to which its decision could “undermine bedrock policies of IPR proceedings”, including their "efficient and cost-effective nature".

“[SCOTUS] should be keenly-focused on Congress’ intent to exempt from judicial review the USPTO’s statutory power to institute IPRs, the most popular form of proceeding under the America Invents Act,” Sebaski said.

Tom King, partner at Haynes and Boone, agreed that SCOTUS’ interest seems “more focused on separation of powers concepts than on patent law”. However, he said the impact of the court’s decision on the patent landscape will be fairly minimal.

“Look to Thryv and similar cases during this term to further delineate what issues Congress can, and cannot, delegate exclusively to the executive branch.

“Whether this particular case is affirmed or reversed is less important than the standards used to make the determination. Expect the court to be mostly unified as to the outcome, but with strong disagreements as to the reasoning,” King said.

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More on this story

Patents
6 May 2020   Last month’s US Supreme Court decision in Thryv v Click-to-Call highlights a division among the Justices when it comes to opposing policy concerns on patents, argue John Lu and Mollie Galchus of Milbank.
Patents
17 August 2018   The US Court of Appeals for the Federal Circuit yesterday ruled that an inter partes review filing is still subject to a time limitation even if a previous patent infringement claim has been dismissed.
Patents
21 April 2020   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.