The Post-Grant Strategist

(Co-authored by Stuart Duncan Smith)

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.

(Co-authored by Stuart Duncan Smith)

The Supreme Court heard oral arguments in Thryv v. Click-to-Call Technologies last month. As we previously discussed, the case concerns whether the PTAB’s finding that a petition for IPR was timely filed is reviewable on appeal. If the Justices’ questions at oral arguments are any indication, a split decision is likely.

At issue in the case is Section 314(d) of the Patent Act, which bars appeal of the PTAB’s decision “to institute an inter partes review under this section.” The Justices must decide whether that statute applies to, and thus bars appeal of, the PTAB’s finding that the petitioner timely filed the petition before the end of Section 315(b)’s one-year window.

(Co-authored by Stuart Duncan Smith)

The statute that created inter partes review (IPR) defines certain situations when IPR is not available. For example, IPR is not available if the petitioner was served with a complaint alleging infringement of the challenged patent more than a year earlier. But if the PTAB institutes an IPR that the statute does not permit, does the patent owner have any way to challenge that institution decision? The obvious answer might seem to be appealing the institution decision to the Federal Circuit Court of Appeals, but the same statute also says the PTAB’s institution decision is “final and nonappealable.” Next month in Thryv, Inc. v. Click-to-Call, the Supreme Court will consider whether patent owners can ask the Federal Circuit to keep IPR within its statutory confines.