The America Invents Act (AIA) authorizes the Patent Trial and Appeal Board (PTAB) to cancel patent claims that never should have been issued but prohibits the PTAB from acting on petitions for review brought more than one year after the petitioner is sued for patent infringement. 35 U.S.C. § 315(b). On April 20, 2020, the Supreme Court issued a 7-2 decision in Thryv, Inc. v. Click-to-Call Techs., LP, No. 18-916, holding that there is no appellate review of the PTAB's decisions to cancel patent claims on the basis that the petitioner filed too late. In so doing, the Supreme Court also unwound any judicial enforcement mechanism for the Federal Circuit's rule that a complaint that is voluntarily dismissed "without prejudice" still triggers the § 315(b) time bar. See Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1328 (Fed. Cir. 2018). However, the director of the Patent Office has indicated that he agrees with the Federal Circuit's interpretation of § 315(b) and thus the PTAB is likely to continue to follow the now vacated Click-to-Call decision.

Section 315(b) of the AIA bars institution of inter partes review if a petition is filed "more than 1 year after the date on which the petitioner … is served with a complaint alleging infringement of the patent." 35 U.S.C. § 315(b). Section 314(d) states that a "determination … whether to institute an inter partes review under this section shall be final and nonappealable." 35 U.S.C. § 314(d). In Oracle Corp. v. Click-to-Call Techs. LP, the PTAB held that § 315(b) is not triggered if the complaint is dismissed without prejudice. See IPR2013-00312 (precedential). In 2015, the Federal Circuit held appeals of the PTAB's time-bar determinations were prohibited by Section 314(d) even when reviewing the final written decision. Achates Reference Pub'g Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015). But in 2018, the Federal Circuit concluded en banc that Section 314(d) did not prohibit appellate review of the PTAB's time-bar determinations when reviewing the final written decision. Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 (Fed. Cir. 2018); Click-to-Call, 899 F.3d at 1328 n.3. The Federal Circuit then reversed the PTAB's precedential decision, holding that a complaint that is voluntarily dismissed is nonetheless "a complaint" under §315(b). Click-to-Call, 899 F.3d at 1328. The Supreme Court granted certiorari on the question of reviewability.

In an opinion written by Justice Ginsburg, the Court largely relied on its decision in Cuozzo Speed Techs., LLC v. Lee, that § 314(d) bars review of "questions that are closely tied to the application and interpretation of statutes related to the Patent Office's decision to initiate inter partes review." 136 S. Ct. 2131, 2141 (2016) (holding that § 314(d) bars judicial review of the PTAB's decision that a petition met the particularity requirements of § 312). The Court held that "§315(b) expressly governs institution and nothing more" and thus such issues cannot be judicially reviewed under Cuozzo, even when the final written decision is reviewed on appeal. As in Cuozzo, the Court did not decide if §314(d) bars appellate review of issues that "implicate constitutional questions." Id. Seven justices joined the majority opinion, although Justices Alito and Thomas did not join a section of the opinion relying on the purpose of the AIA to support the holding.

Justice Gorsuch, joined for the most part by Justice Sotomayor, dissented. Justice Gorsuch wrote that the text of §314(d) only bars review of determinations made "under this section"—that is, the PTAB's substantive institution decisions under §314(a), not procedural determinations under other sections of the AIA. The majority held that "Cuozzo is fatal to [this] interpretation" because Cuozzo bars review of issues "closely related" to the question of institution. Unrelenting, Justice Gorsuch characterized this Cuozzo language as dicta and opined that the majority decision (which he wrote) in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) repudiated it.

As a consequence of the Supreme Court's decision, the Federal Circuit's decisions in Click-to-Call and Wi-Fi One are overruled and the PTAB once again is free to decide how to interpret §315(b)'s one-year time bar, including which complaints will trigger the bar. However, the current director of the Patent Office has indicated in several places that he agrees with the Federal Circuit's interpretation of §315(b). For example, the government's brief to the Supreme Court states that "[t]he Director has come to the view that the proceedings in this case should not have been instituted under the best interpretation of Section 315(b)." This did not go unnoticed by Justice Gorsuch who noted that "[m]ost remarkably, the Court denies judicial review even though the government now concedes that the patent owner is right." The director's view is further reflected in several final written decisions he has designated precedential where the PTAB declined to institute using the reasoning in Click-to-Call. See, e.g., Infiltrator Water Techs., LLC v. Presby Patent Trust, No. IPR2018-00224, Paper 18 (Oct. 1, 2018) (designated precedential Sep. 9, 2019). It is also reflected in the Precedential Opinion Panel's decision to reverse an original PTAB panel's decision to grant institution, a decision which the director joined. See GoPro, Inc. v. 360Heros, Inc., No. IPR2018-01754, Paper 38 (Aug. 23, 2019). Going forward, at least under the current director, one might expect the board will continue to follow Click-to-Call's interpretation of §315(b) even though such decisions will no longer be reviewable by the Federal Circuit.

More broadly, the Supreme Court's reasoning indicates that any non-merits decision closely tied to the institution decision is non-appealable unless an "extraordinary situation[]" takes place requiring the courts to provide a "drastic remedy." Slip op. at 22 (Gorsuch, J., dissenting) (quoting Kerr v. United States Dist. Ct. for Northern Dist. Of Cal., 426 U.S. 394, 402 (1976)). Absent judicial review, Justice Gorsuch predicts that procedural determinations will not be applied consistently but will instead favor "those with political clout, the powerful and the popular." See Slip Op. at 20 (Gorsuch, J., dissent). While it remains to be seen whether Justice Gorsuch's concerns will play out, at minimum the Thryv decision represents a significant reduction in the appeal arguments available to a party dissatisfied with a PTAB decision.

For more information about the Thryv decision or any related matter, please contact any member of the post-grant review practice at Wilson Sonsini Goodrich & Rosati.