Introduction

The Supreme Court case Thryv, Inc. v. Click-to-Call Technologies, LP (140 S. Ct. 1367, 2020) addresses the scope of judicial review over the U.S. Patent and Trademark Office's (PTO) decisions to institute inter partes review (IPR) of patent claims. Thryv, Inc., formerly Dex Media, Inc., challenged the validity of Click-to-Call Technologies' patent through an IPR proceeding. The central legal issue revolved around whether courts could review the PTO's determination regarding the timeliness of such petitions under 35 U.S.C. §315(b).

Summary of the Judgment

The Supreme Court held that under 35 U.S.C. §314(d), the PTO's decision to institute an inter partes review is final and non-appealable, including determinations related to time constraints under §315(b). Thus, Click-to-Call Technologies' appeal challenging the timeliness of Thryv's IPR petition was dismissed for lack of appellate jurisdiction. The Court reaffirmed that statutory provisions closely tied to the institution decision are precluded from judicial review, emphasizing the finality intended by Congress in the statutory framework governing IPR.

Analysis

Precedents Cited

The Court heavily relied on its previous decision in Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. ___ (2016), which established that determinations by the PTO to institute IPR are final and non-appealable when they are closely tied to statutory provisions guiding institution. Additionally, SAS Institute Inc. v. Iancu, 584 U.S. ___ (2018), was referenced to clarify the boundaries of what aspects of IPR decisions are reviewable, emphasizing that only the final written decisions on the merits are subject to appeals, not the institution decisions.

Legal Reasoning

The Court's reasoning centered on the interpretation of 35 U.S.C. §314(d), which explicitly states that the PTO Director's determination to institute an IPR "shall be final and nonappealable." The Court determined that a challenge based on §315(b)'s time limitation is intrinsically linked to the institution decision, as §315(b) sets a critical threshold for instituting IPR. Allowing judicial review of §315(b) applications would undermine the finality and efficiency that Congress intended for the IPR process.

Furthermore, the Court considered the statutory scheme's purpose under the Leahy-Smith America Invents Act (AIA), which aimed to streamline patent disputes and reduce litigation overhead by empowering the PTO to conduct IPR proceedings effectively. The decision ensures that once the PTO decides to institute IPR, parties cannot continuously challenge procedural aspects like timing in courts, preserving the intended efficiency and finality of the process.

Impact

This judgment solidifies the position that PTO's decisions to institute IPR, including those concerning the timeliness of petitions under §315(b), are beyond the reach of judicial appeals. This reduces the opportunities for patent owners to contest procedural aspects post-institution, thereby reinforcing the AIA's objective to expedite patent validity challenges. Future cases involving the timing of IPR petitions will likely follow this precedent, limiting grounds for appeal and promoting a more streamlined patent review process.

Complex Concepts Simplified

Inter Partes Review (IPR)

Inter partes review is an administrative process through which a third party can challenge the validity of an existing patent's claims. It is conducted by the PTO's Patent Trial and Appeal Board (PTAB) and is intended to be a faster, more cost-effective alternative to traditional court litigation.

35 U.S.C. §314(d)

This statute states that the PTO Director's decision to start an IPR proceeding is final and cannot be appealed in court. This means once the Director decides to proceed with an IPR based on a petition, that decision stands without judicial oversight.

35 U.S.C. §315(b)

Section §315(b) imposes a time limit on when an IPR petition can be filed. Specifically, it prohibits starting an IPR more than one year after being served with a lawsuit alleging patent infringement. This is intended to prevent prolonged litigation over the same patent claims.

Conclusion

The Supreme Court's decision in Thryv v. Click-to-Call Technologies reinforces the finality of the PTO's institution decisions regarding inter partes reviews, including those based on procedural grounds like timing under §315(b). By limiting judicial review to only the final decisions on patent validity and excluding appeals on institution decisions, the Court upholds the AIA's framework aimed at streamlining patent disputes. This ruling underscores the balance between administrative efficiency and judicial oversight, ensuring that the patent review process remains swift while maintaining a clear boundary for appellate intervention.