Supreme Court Holds PTAB Time Bar Decisions Cannot Be Judicially Reviewed

On April 20, 2020, a divided Supreme Court held that a PTAB determination of whether an IPR petition is timely under 35 U.S.C. § 315(b) cannot be judicially reviewed.¹

Thryv petitioned the Patent Trial and Board to institute inter partes review of Click-To-Call’s patent. Click-To-Call argued that the petition was untimely under § 315(b) based on a lawsuit filed against Thryv’s predecessor in 2001. The Board determined that Thryv’s petition was timely, instituted review, and found 13 claims of Click-To-Call’s patent unpatentable. Click-to-Call appealed the timeliness determination. On appeal, the Federal Circuit reversed the Board’s § 315(b) determination. Thryv then petitioned for certiorari at the Supreme Court, which was granted.

The Court, in a 7-justice majority opinion by Justice Ginsburg, held that § 315(b) time bar determinations are not appealable, vacated, and remanded with instructions for the Federal Circuit to dismiss for lack of jurisdiction.

The majority opinion focuses on the language of 35 U.S.C. §§ 314(d) and 315(b), as well as the Court’s earlier decision in Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. ___, 136 S. Ct. 2131 (2016). Section 315(b) states that “[a]n inter partes review may not be instituted” if a petition “is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging [patent] infringement.” Section 314(d) states that the USPTO Director’s determination “whether to institute an inter partes review under this section shall be final and nonappealable.” Relying on Cuozzo, the Court held that a “challenge to a petition’s timeliness under § 315(b) . . . raises an ‘ordinary dispute about the application of’ an institution-related statute” and cannot be appealed because it is essentially “a contention that the agency should have refused ‘to institute an inter partes review’” under § 314(d). Thryv, 590 U.S. at ___, slip op. at 8.

The majority supported its conclusion, in part, by looking to the congressional intent of the AIA.² The Court reasoned that IPR proceedings were designed to create a “more efficient and streamlined” system to challenge patent validity. Id. at 8. The Court reasoned that, if parties were allowed to appeal § 315(b) determinations, a successful appeal challenge could vacate a finding of unpatentability without prevailing on the merits, thus “wasting the resources spent resolving patentability and leaving bad patents enforceable.” Id. at 9.

The majority also determined that other AIA provisions compel the same conclusion because they “prioritize[] patentability over §315(b)’s timeliness re­quirement.” Id. For example, the Court observed that, even if a petitioner is barred under § 315(b), it may still join a timely challenge by another petitioner under § 315(c). Allowing judicial review of timeliness determinations, the Court reasoned, could prevent streamlined resolution of patentability the AIA sought to achieve.

The majority also rejected Click-to-Call’s narrower interpretation of § 314(d) that the appeal prohibition was limited solely to the Board’s determination of a petitioner’s “reasonable likelihood” of success under § 314(a). Thryv, 920 U.S. __, slip op. at 10-13. The majority considered the statutory language and determined that § 314(d) “sweeps more broadly” than just the likelihood of success determination because it does not refer to only subsection (a), but rather refers to “this section” and “encompasses the entire determination” whether to institute review. Id. at 11.

 The Court thus vacated the Federal Circuit’s decision and remanded with instructions to dismiss for lack of jurisdiction.

Justice Gorsuch wrote a dissenting opinion, in which Justice Sotomayor joined. Justice Gorsuch’s dissent criticizes the majority’s decision as allowing the USPTO to revoke inventors’ property rights without judicial reviewability of the timeliness of the challenges. The dissent questions how § 314(d) can prevent judicial review of an agency’s mistaken interpretation of a different section of the statute—§ 315—and concludes that “[t]he answer is that it doesn’t.” Thryv, 590 U.S. at ___, Gorsuch, J., dissenting, slip op. at 6. Because § 314(d) only prevents review of “[t]he determination” made “under [that] section,” the dissent argues that it does not preclude review of a determination made under § 315(b).

The dissent also argues that neither the majority’s nor Thryv’s arguments overcome the strong presumption favoring interpretations of statutes to allow for judicial review of administrative actions. In the dissent’s view, § 315(b) is an express limit by Congress on agency authority and to hold otherwise requires a clear showing of Congressional intent, which the dissent argues the majority has not shown.

Endnotes

¹ The Court “[did] not decide whether mandamus would be available in an ex­traordinary case.” Thryv, 590 U.S. at ___, slip op. at 8 n.4.

² Section III(C) of the Thryv opinion, discussing congressional intent, was not joined by Justices Thomas and Alito.