This morning the Supreme Court issued its opinion in Thryv, Inc. v. Click-to-Call Technologies, LLC. The Court held that time-bar decisions made by the Patent Trial and Appeal Board when determining whether to institute inter partes review proceedings are not appealable. Justice Ginsburg authored the majority decision. Justices Gorsuch and Sotomayor dissented.
Justice Ginsburg explained that the Court “need not venture beyond Cuozzo’s holding that [35 U.S.C.] §314(d) bars review at least of matters ‘closely tied to the application and interpretation of statutes related to’ the institution decision . . . , for a [35 U.S.C.] §315(b) [time-bar] challenge easily meets that measurement.” She explained that “Section 315(b)’s time limitation is integral to, indeed a condition on, institution.” She also reasoned that “[t]he AIA’s purpose and design strongly reinforce [the Court’s] conclusion.” In particular, she explained that “[a]llowing §315(b) appeals would tug against that objective, wasting the resources spent resolving patentability and leaving bad patents enforceable.”
The majority opinion rejected the view that “the bar on judicial review applies only to the agency’s threshold determination under §314(a) of the question whether the petitioner has a reasonable likelihood of prevailing.” In the Court’s view, Cuozzo “is fatal” to this interpretation because “the Court’s opinion in Cuozzo explained that the bar extends to challenges grounded in ‘statutes related to’ the institution decision.” The majority rejected the argument that SAS Institute‘s description of the holding in Cuozzo confirms that judicial review is precluded only of the Director’s initial determination that there is a reasonable likelihood that claims are unpatentable on the asserted grounds. The majority explained that SAS Institute‘s “account of Cuozzo is incomplete.”
Justice Gorsuch—the author of SAS Institute‘s description of Cuozzo that the majority rejected here and the author of the only opinion in Oil States dissenting from the majority’s conclusion that cancellation of patents by the Patent Trial and Appeal Board does not violate Article III of the Constitution—dissented in an opinion joined in large part by Justice Sotomayor. The introduction to his opinion highlights both his position and the importance of today’s majority opinion:
“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. Worse, the Court closes the courthouse not in a case where the patent owner is merely unhappy with the merits of the agency’s decision but where the owner claims the agency’s proceedings were unlawful from the start. Most remarkably, the Court denies judicial review even though the government now concedes that the patent owner is right and this entire exercise in property-taking-by-bureaucracy was forbidden by law.”
“It might be one thing if Congress clearly ordained this strange result. But it did not. The relevant statute, the presumption of judicial review, and our precedent all point toward allowing, not forbidding, inventors their day in court. Yet, the Court brushes past these warning signs and, in the process, 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.”
Beyond the Court’s holding that patent owners may not appeal time-bar decisions made by the Patent Trial and Appeal Board when determining whether to institute inter partes review, today’s ruling is important because it reflects a continuing theme at the Supreme Court. As it did in Oil States and Cuozzo, the Court has ruled against the interests of patent owners in the context of judicial review over inter partes review proceedings, and Justice Gorsuch has emerged as the only consistent voice trumpeting concern. Notably, however, his concern relates not to the interests underlying patent law, for example the interest in encouraging inventive efforts, but instead to more fundamental interests: separation of powers, judicial review, and property interests more generally.