On April 20, 2020, the U.S. Supreme Court decided that the USPTO’s decision to institute inter partes review, even after the one-year statutory time limit for requesting the review, is not appealable. In other words, the USPTO has the final say for all questions that are closely tied to its decision whether to initiate inter partes review. The case is Thryv, Inc., FKA Dex Media, Inc. v. Click-To-Call Technologies, LP, et al., No. 18–916 (S. Ct. April 20, 2020).
Turning to the details, inter partes review is an administrative process in which a patent challenger may ask the U.S. Patent and Trademark Office (USPTO) to reconsider the validity of earlier granted patent claims. 35 U.S.C. § 311. Among other restrictions, an inter partes review may not be instituted if the petition requesting the review was filed more than one year after the petitioner was served with a complaint alleging infringement of the patent. 35 U.S.C. § 315(b). Based on the petition, the USPTO determines whether to institute an inter partes review. 35 U.S.C. § 314(a). Determinations “under this section” of the statute are not appealable. 35 U.S.C. § 314(d).
In the case before the Supreme Court, the USPTO had instituted an inter partes review of the patent and several of the patent’s claims were canceled as a result of that administrative proceeding. The patent owner appealed, claiming that the petition was filed too late, in violation of the one-year time limit specified in Section 315(b) of the statute.
The one-year time limit is located in a different section of the statute (namely, Section 315) from the prohibition on appeals of the USPTO’s decisions “under this section” (namely, Section 314). Yet, the Supreme Court concluded that the USPTO’s application of the time limit statute is also not appealable. The reason, according to the majority opinion, is that the time limit is closely related to the USPTO’s decision under Section 314 whether to institute the inter partes review based on the merits of the petition itself.
This rationale is based on the Supreme Court’s earlier decision in the Cuozzo case, which stated that the bar on appeals in Section 314(d) “applies where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the USPTO’s decision to initiate inter partes review.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2141 (2016). In the current case, the Court determined that the application of the one-year time limit of Section 315 of the statute “easily meets that measurement.”
As with many things in the legal realm, outcomes will depend on the particular facts and circumstances of the case. So, if you are faced with bringing or defending an inter partes review, one of our experienced patent attorneys can help you navigate the complexities.