April 20, 2020

Supreme Court Decides Thryv, Inc. v. Click-to-Call Technologies, LP

On April 20, 2020, the U.S. Supreme Court decided Thryv, Inc. v. Click-to-Call Technologies, LP, holding that when the Patent and Trademark Office grants a petition for inter partes review and rejects a contention that the petition is time-barred, that rejection is not reviewable on appeal.

35 U.S.C. § 314 allows the PTO to institute inter partes review to reconsider the validity of previously granted patents. It provides that “[t]he determination by the [PTO] whether to institute an inter partes review under this section shall be final and nonappealable.” § 314(d). The next section of the patent laws provides that “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after … the petitioner … is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b).

In 2013, Thryv, Inc. petitioned for inter partes review of a patent on technology for anonymous phone calls. The patent owner, Click-to-Call Technologies, LP, responded that the petition was time-barred because one of Thryv’s predecessor companies had been sued for infringing the patent in 2001. The PTO disagreed, ruling for procedural reasons that the 2001 suit did not start the one-year clock running. It instituted inter partes review and went on to cancel many of the patent’s claims. Click-to-Call appealed, arguing that the review should not have been instituted because the petition was untimely, but Thryv responded that this argument was barred by § 314(d). The Federal Circuit disagreed, held that the petition was time-barred, and vacated the PTO’s decision.

The Supreme Court reversed by a 7-2 vote, holding that by the plain text of the statute, “a contention that a petition fails under §315(b) is a contention that the agency should have refused ‘to institute an inter partes review’” and therefore is barred by § 314(d). The Court stated that this furthers the goal of the statute, which is “to weed out bad patent claims efficiently,” not “to save bad patent claims” through procedural technicalities. Although § 314(d) bars review of PTO decisions “under this section” and the one-year time bar appears in § 315, the Court noted that the authorization for inter partes review appears in § 314, so “every decision to institute” inter partes review “is made ‘under’” that section. The Court reaffirmed its holding from a previous case “that the bar” on appeals “extends to challenges grounded in statutes related to the institution decision.”

Justice Ginburg authored the opinion of the Court, in which Chief Justice Roberts and Justices Breyer, Kagan, and Kavanaugh joined, and in which Justices Thomas and Alito joined in part. Justice Gorsuch filed a dissenting opinion, in which Justice Sotomayor joined in part.

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