Supreme Court Says PTAB’s Time Bar Decisions Not Appealable
Written April 20, 2020
The United States Supreme Court on April 20, 2020, held that 35 U.S.C. § 314(d), which states that the Patent Trial and Appeal Board's (PTAB) decision to institute an inter partes review (IPR) is nonappealable, also precludes judicial review of a time bar determination under 35 U.S.C. § 315(b). Thryv, Inc. v. Click-To-Call Technologies, LP, U.S., No 18–916, 4/20/20.
Despite Click-to-Call’s argument that the bar on appeals under §314(d) is limited to the PTAB's threshold determination under §314(a) of the question whether the petitioner has a reasonable likelihood of prevailing, the Court explained that Cuozzo Speed Technologies, LLC v. Lee “is fatal to that interpretation.”
In Cuozzo, a party contended that the PTAB should have refused to institute an IPR because the petition failed §312(a)(3)’s requirement that the grounds for challenging patent claims must be identified “with particularity.” There, the Court explained that “the text of §314(d) expressly states that the Patent Office’s determinations whether to institute inter partes review ‘shall be final and nonappealable,’ and that “a ‘strong presumption’ favoring judicial review is overcome by ‘clear and convincing’ indications that Congress intended to bar review.” Likewise, the Court held that the no-appeal provision will preclude appellate review in cases “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 Patent Office’s decision to initiate inter partes review.”
While the Court in Cuozzo did “reserve judgment” on whether Section 314(d) would bar all appeals, such as those “that implicate constitutional questions,” here, Justice Ginsburg explained, the issue did not meet that criteria as the time bar question is closely related to the institution decision. Indeed, said the Court, §315(b) “governs institution and nothing more,” and therefore is merely “a contention that the agency should have refused ‘to institute an inter partes review.’ Thus, as in Cuozzo, §314(d) overcomes the presumption favoring judicial review.
Justice Ginsburg went on to explain that this conclusion is strongly supported by the statute’s purpose and design. Congress, she explained, was so concerned about "overpatenting and its diminishment of competition" that it sought to weed out bad patent claims efficiently. Allowing §315(b) appeals would "tug against that objective, wasting the resources spent resolving patentability and leaving bad patents enforceable."
In his dissenting opinion, Justice Gorsuch, joined by Justice Sotomayor, argues that §314(d) should not "insulate from judicial review" an interpretation of an entirely different provision like the time bar in §315(b). Furthermore, Gorsuch says that the majority’s opinion “takes a flawed premise—that the Constitution permits a politically guided agency to revoke an inventor’s property right in an issued patent—and bends it further, allowing the agency’s decision to stand immune from judicial review.”