Does the patent statute permit patent owners to appeal decisions by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board that petitions for inter partes review were not filed late? Or, under the statute, are these decisions simply unreviewable? The Supreme Court will tackle these questions on Monday, when it will hear argument in Thryv, Inc. v. Click-To-Call Technologies, LP.
Thyrv argues is its opening merits brief that the America Invents Act “contains clear and convincing indications that Congress intended to preclude judicial review” of PTAB determinations that the time bar of 35 U.S.C. § 315(b) does not apply. In particular, “[s]ection 315(b) identifies particular circumstances in which an IPR ‘may not be instituted,’ and § 314(d) precludes judicial review of ‘[t]he determination . . . whether to institute an inter partes review.’” (ellipsis in original). Thryv goes on to say that the Court’s decisions in Cuozzo Speed Technologies, LLC v. Lee and SAS Institute Inc. v. Iancu support reversal, as does the “overall purpose” of the AIA. Specifically, Thryv argues that “Congress intended the AIA to provide a quick and cost-effective alternative to litigation in federal court,” and “[t]his purpose would be eviscerated by allowing the Federal Circuit to overturn the PTAB’s patentability decisions based on preliminary procedural rulings.”
Notably, the government, which had intervened in this case, opposed Thryv’s petition. The government argued that “this case would be a poor vehicle for considering the question whether Section 314(d) precludes review of the USPTO’s application of Section 315(b).” After the Supreme Court granted the petition, however, the government came down on the side of Thryv with respect to the question presented. As a result, the government filed an opening merits brief making arguments almost exactly consistent with the arguments made by Thryv’s counsel. For example, the government argues that “[t]he text, structure, and history of the AIA demonstrate that the USPTO’s Section 315(b) determinations are not reviewable.”
In its response brief, Click-to-Call Technologies argues that, “[u]nder Section 315(b), Congress placed a clear limit on the USPTO’s authority, and nothing in Section 314(d) suggests that Congress left the agency as the sole arbiter of its own jurisdiction.” Indeed, says Click-to-Call, “[i]f Congress genuinely intended such an extraordinary departure from the most traditional norms of judicial review, one would expect to see that intent reflected in the clearest possible fashion.” Yet, according to Click-to-Call, “[n]othing in the AIA remotely surpasses that threshold.” Click-to-Call contends that “[t]he proper outcome is clear from a straightforward reading of the operative text” because Section 314(d) limits review of the determination “under th[at] section,” not “under this chapter.” The relevant “determination,” according to Click-to-Call, is the determination “found in Section 314(a), not Section 315(b)—which, numerically, is not ‘under th[at] section.’” Click-to-Call contends that “it would make little sense for Congress to place the ‘no appeal’ provision in Section 314 if it wished to capture determinations made in other sections; the better explanation—especially in light of Congress’s careful choice of the term ‘under this section’—is that Congress was indeed focused on the initial merits determination found in Section 314(a), not statutory limits imposed elsewhere in that chapter.” Moreover, Click-to-Call maintains that the Court “already rejected the foundation of the government’s and petitioner’s argument in SAS Institute v. Iancu,” when the court characterized Cuozzo Speed Technologies, LLC v. Lee as holding that “§ 314(d) precludes judicial review only of the Director’s ‘initial determination’ under § 314(a) that ‘there is a “reasonable likelihood” that the claims are unpatentable.’” (emphases added). In a stinging rebuke, Click-to-Call suggests that Thryv “repeatedly refuses to grapple with Section 314(d)’s actual text, eliding or truncating the key phrase (‘under this section’) in critical parts of its brief.”
In its reply brief, Thryv argues that Congress “made a deliberate policy decision to preclude judicial review of the decision to institute an [inter partes review],” and characterizes the respondent’s position asking the Court “to overturn Congress’s considered policy judgment.” But, in Thryv’s view, “[n]othing in respondent’s brief justifies judicial review of § 315(b) time-bar determination.” For its part, Thryv provides its own stinging rebuke, suggesting that Click-to-Call “criticizes Cuozzo’s application of § 314(d) while mischaracterizing it as merely a ‘proposal’ by petitioner and the Director.”
Also filing a reply brief, the government characterizes Click-to-Call Technologies as arguing “that the institution decision . . . in this case was unlawful because a closely related provision, Section 315(b), precluded institution.” But, says the government, “[t]he plain text of Section 314(d) unambiguously bars judicial review of that claim.” Moreover, it contends, “[t]he structure of the [America Invents Act], the history of similar post-grant review procedures, this Court’s recent precedent, and the AIA’s purposes all reinforce that conclusion.”
Beyond the parties’ and the government’s briefs, the case attracted a fair number of amicus briefs. Those opposing the reviewability of time-bar determinations include the briefs filed by the following groups:
- Atlanta Gas Light Company
- AARP and AARP Foundation
- ON Semiconductor Corporation, Semiconductor Components Industries, LLC, Fairchild Semiconductor International, Inc.
- Intel Corporation
- Superior Communications, Inc.
Those supporting review include the briefs filed by these groups:
- Federal Circuit Bar Association
- American Intellectual Property Law Association
- New York Intellectual Property Law Association
- Pharmaceutical Research and Manufacturers of America
- Biotechnology Innovation Organization
- Stephen I. Vladeck
- Power Integrations, Inc.
One amicus brief did not identify support for either outcome:
The Court may find this last amicus brief by the PTAB Bar Association most helpful. The Association concedes that it does not take a position because its “membership has a range of views on the merits of this case.” And, the brief confesses, “it is generally more common for patent owners to favor and for petitioners to disfavor the reviewability of decisions on whether a time bar applies.” This concession and confession, however, likely amplify the brief’s remaining points by signaling evenhandedness and frankness. Furthermore, the Association’s brief makes several helpful points. For example, it helpfully catalogs the issues the Court’s decision in this case might implicate. It explains that while this case addresses a particular time-bar determination, “time-bar determinations occur in many other situations too,” before providing examples. Moreover, the brief continues, “this Court’s decision may have implications on many other issues related to the interpretation of section 315(b).” The brief lists the reviewability of the legal standard to determine whether a party is a real party in interest, the burden of proof for real-party-in-interest analyses, the effect of adding a corporate parent to the list of real parties in interest, the effect of post-petition mergers on real-party-in-interest analyses, and the effect of involuntary and voluntary dismissal of complaints with respect to the time-bar clock, among other issues.
As highlighted by the PTAB Bar Association, this case is important because it will either open up the PTAB’s preliminary determinations on a host of issues to review and correction by the Federal Circuit, or eliminate review of these issues by the Federal Circuit. With respect to these issues, it will either leave the USPTO to its own devices, in other words, or include the Federal Circuit in the process. And if the case results in the reviewability of the PTAB’s determinations on these issues, it significantly expands the bases for patent owners to argue PTAB decisions invalidating their patents should be vacated or reversed. It is no wonder that patent owners generally favor reviewability, and thus affirmance here, while challengers of patents generally favor unreviewability, and thus reversal here. As shown by the briefing in the case, however, the Court’s resolution of the dispute will come down to a matter of statutory interpretation, and therefore the Court’s conclusion whether Congress permitted—or instead prohibited—reviewability of these issues.