Patent owners have lost another potential appeal argument relating to Patent Trial and Appeal Board (PTAB) decisions after a recent decision by the U.S. Supreme Court.
In Thryv, Inc. v. Click-To-Call Technologies, LP the Supreme Court held that PTAB decisions on whether validity challenges were filed on time are final and cannot be reviewed by an appellate court. The decision further protects a range of PTAB actions from review in the appellate courts, limiting the scope of the Federal Circuit’s power.
The case hinged on whether Congress, in establishing inter partes review proceedings, intended to allow an appeal of a PTAB decision to institute inter partes review on the basis that the PTAB improperly found that a one-year time bar does not apply. The 7-2 opinion cites Section 314(d) of the Patent Act, which states that “the determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” Even though the one-year time bar is found under a different section (315(b)), the justices held that Section 314(d) nevertheless bars courts from reviewing a USPTO decision to institute inter partes review even if the agency incorrectly applied the statutory time limit.
Writing for the majority, Justice Ruth Bader Ginsberg said, “This conclusion is strongly reinforced by the statute’s purpose and design. Congress designed inter partes review to weed out bad patent claims efficiently. Allowing §315(b) appeals, however, would unwind agency proceedings determining patentability and leave bad patents enforceable.” Thus, to the majority, it makes little sense to undo the work performed over a year or more to substantively evaluate a patent’s merits over a procedural impropriety.
Others are troubled, however, by the expansion of the PTAB’s untouchability on certain issues, as the decision presents another significant development in the relationship between the power of the USPTO and the power of the courts. Indeed, Justice Neil Gorsuch, joined in part by Justice Sonia Sotomayor, dissented, writing that the decision “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.”
Should this decision spur any action for clarification by Congress (however unlikely), perhaps a compromise could include some form of expedited interlocutory review of time-bar decisions. For the foreseeable future though, patent owners are stuck having to take their best shot on time-bar arguments at the PTAB.
If you have questions about inter partes review or other post-grant proceedings, please contact me or another one of the IP attorneys at Panitch Schwarze at 888.291.5676.