Last week, the Supreme Court released its opinion in Thryv, Inc. v. Click-to-Call. This case, as we previously reviewed, concerns whether the PTAB's application of the one-year statutory time bar for an IPR is appealable. The Patent Statute says that the PTAB's decision to institute an IPR is "final and nonappealable," but the Federal Circuit interpreted that bar on judicial review narrowly and found it inapplicable to the question of whether the one-year statutory time bar applied. Oral arguments suggested that the Court would likely be divided. Ultimately, the court was split 7-2, with the majority holding that the time bar was not an appealable issue.
Justice Ginsburg authored the majority opinion, which characterized the question here as having been all but decided by the Court's prior decision in Cuozzo. According to the majority, Cuozzo held that Section 314(d) bars appeal of "questions that are closely tied to the application and interpretation of statutes related to" the institution decision. The majority here found that Section 315(b)'s time bar met that test since it is "integral to, indeed a condition on, institution," and thus is not appealable.
Of particular concern to Justice Ginsburg was that allowing patent owners to appeal the PTAB's time-bar determinations would create the potential for situations in which the time spent by the PTAB deciding the merits of the IPR challenge could "be undone and the canceled patent claims resurrected." She reasoned that since only those patent owners who were unsuccessful at defending their patent in an IPR would have reason to challenge the timeliness of the petition, allowing appeal "would operate to save bad patent claims."
Justice Gorsuch wrote a dissenting opinion and was joined by Justice Sotomayor. The dissent took issue with the majority's interpretation of Cuozzo and its reading of the statute. And the dissent highlighted a key question for parties to IPR going forward: if the PTAB's application of the time bar is unreviewable, what else is unreviewable? The statute imposes other limits on the PTAB power to institute IPR, and the dissent asked whether the majority's opinion may preclude judicial review of those issues as well.
- In a win for petitioners, the PTAB's application of the time bar is no longer appealable. As Justice Ginsburg's decision highlighted, final decisions from the PTAB canceling claims are now more likely to stand on appeal.
- Patent owners should make the strongest case possible before institution that the one-year time bar applies. But patent owners should also not neglect to ignore the issue after institution since new evidence might, in some situations, convince the PTAB to dismiss an already-instituted IPR.
- The Federal Circuit will have to decide whether the decision in Thryv means that other limits on the PTAB's authority to institute IPR are likewise not appealable. For example, the petitioner in Facebook v. Windy City recently cited Thryv as a basis for the Federal Circuit to reconsider its decision limiting the PTAB's power to join new parties and issues to an existing IPR.
Article originally published on 7 May 2020The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.