Thryv, Inc. v. Click-to-Call Technologies, LP, U.S., No. 18-916, amicus brief filed 09/10/2019.

September 10, 2019

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AIPLA argues that the Supreme Court should affirm the Federal Circuit’s en banc holding that 35 U.S.C. § 314(d) does not preclude judicial review of the Patent Trial and Appeal Board’s (Board’s) final determination of whether a petition for inter partes review is time-barred under 35 U.S.C. § 315(b).

The Leahy-Smith America Invents Act (AIA) created an administrative inter partes review proceeding in which any person can challenge the patentability of an issued patent by filing with the Director of the United States Patent and Trademark Office (Patent Office) a petition requesting cancellation of one or more claims of a patent.2 35 U.S.C. §§ 311-319.

The AIA places certain statutory limitations on the Board’s authority to institute inter partes review. One of these limits, Section 315(b), prohibits institution of inter partes review if the petition is filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.

Akin to a standing or jurisdictional determination, the Board’s determination in an institution decision that it complied with the Section 315(b) time bar should be appealable under Section 319 as part of the Board’s final written decision, consistent with the Administrative Procedure Act (APA).

The “no appeal” rule of Section 314(d) does not preclude review. By it very terms, the “no appeal” rule is limited to the Board’s determination “under this section”—that is Section 314. 35 U.S.C. § 314(d).

In Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2141 (2016), this Court held that Section 314(d) “applies where the grounds for attacking the decision to institute inter partes review consist of questions that are closely related to the Patent Office’s decision to initiate inter partes review.” The Court reserved judgment in Cuozzo on how Section 314(d) impacts appeals “that implicate constitutional questions, that depend on other less closely related statutes, or that present other questions of interpretation that reach . . . well beyond” the Board’s decision to institute under Section 314. Id. at 2141-42. The Court did note, however, that judicial review is permitted to prevent “shenanigans” where the Board exceeds the statutory limits the AIA imposes. Id. at 2141-42.

The Court revisited Section 314(d) in SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). In SAS, the Court rejected the Board’s practice of instituting inter partes review proceedings on some but not all claims challenged in a petition, dismissing the Director’s contention that judicial review was precluded under Section 314(d). Id. at 1359-60. According to the Court, “Cuozzo concluded that § 314(d) precludes judicial re-view only of the Director’s ‘initial determination’ under § 314(a) that ‘there is a reasonable likelihood that the claims are unpatentable on the grounds asserted’ and review is therefore justified.” Id. at 1360 (emphasis added). The Court concluded that “nothing in § 314(d) or Cuozzo withdraws [judicial] power to ensure that an inter partes review proceeds in accordance with the law’s demands.” Id. The Court thus left the door open for review of certain determinations as part of the Board’s final written decision, even though those determinations may have been made at the institution stage.

Consistent with Cuozzo and SAS, Section 314(d) should not prohibit review of the Board’s determination that it has complied with the limits placed on it under Section 315(b). This determination is not “closely related” to the Board’s determination under Section 314(a) that there is a reasonable likelihood the claims are unpatentable on the grounds asserted in the petition. Nor is compliance with Section 315(b) “an ordinary dispute” or “some minor statutory technicality[.]” Cuozzo, 136 S. Ct. at 2139-40. It goes to the heart of the Board’s authority to institute an inter partes review in the first place.

This case illustrates why it is appropriate to review a disputed Section 315(b) determination that a time bar does not apply. Importantly, the policies of the Patent Office have changed since the Board’s final written decision in this case. The agency now agrees that the proper course of action in this case would have been to decline to institute inter partes review. Judicial review would limit the Board’s ability to expand the scope of its authority beyond statutory limits and foster consistency in Board decisions in the future. Having placed limits on the Board’s ability to institute inter partes review proceedings under Section 315(b), Congress did not intend to remove appellate review of such time-bar determinations.

The Court should therefore affirm the Federal Circuit’s holding that the Board’s determination of disputed Section 315(b) time bar issues is reviewable on appeal.

2 The AIA has been codified in Title 35 of the United States Code.  

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