The U.S. Supreme Court (Supreme Court) ruled on April 20, 2020, that a patent owner may not appeal the decision of the U.S. Patent Trial and Appeal Board (PTAB) that an inter partes review (IPR) petition is time-barred. In Thryv, Inc. v. Click-to-Call Technologies, LP, the court reversed an en banc Federal Circuit opinion that such time-bar decisions were reviewable. The 7-2 decision was authored by Justice Ginsburg, in which Chief Justice Roberts and Justices Breyer, Kagan and Kavanaugh joined. Justices Thomas and Alito joined in part. Justice Gorsuch dissented and Justice Sotomayor joined the dissent in part.

What the Ruling Means

When a patent owner brings a lawsuit against an alleged infringer, the defendant has one year from the service of the complaint to file an IPR petition; otherwise, it is time-barred. If the patent owner believes the petition is time-barred, it must so argue in its preliminary response. With this decision from the Supreme Court, the PTAB’s determination on whether the petition is time-barred is no longer reviewable.

How the Ruling May Impact Your Business

In Cuozzo Speed Technologies, LLC v. Lee, the Supreme Court held that the America Invents Act (AIA) barred judicial review of the PTAB’s substantive decision on the merits of whether to institute review. The Thryv decision specifically extends that holding to apply to the procedural time-bar provision. As such, patent owners are well-advised to file a preliminary response prior to the institution decision by PTAB, although many forgo this optional step. As institution decisions are clearly not appealable, patent owners risk much in not filing a preliminary response. Similarly, a putative petitioner should not wait until the last moment to file an IPR petition or post-grant review petition, as they are likewise barred from appealing the decision whether to institute.  With each passing day, the invalidity challenge, irrespective of its merits, risks being time-barred with no recourse to overturn that decision.

The time-bar provision not only affects the IPR petitioner, but also all its real parties in interest including its parent companies or predecessors prior to any merger. Therefore, practitioners should conduct proper due diligence at the outset to determine the “real parties-in-interest” to ensure compliance with this equally important procedural issue.

The Thryv decision may also affect the PTAB’s rulings on other procedural institution issues, such as compliance with the petition requirements of 35 U.S.C. § 312. Therefore, practitioners are well-advised to comply with all procedural aspects of the petition.

Procedural History

This case relates to U.S. Patent No. 5,818,836, (’836 patent) directed to anonymizing telephone calls. In 2001, the inventor of the ’836 patent granted an exclusive license to Inforocket, which then sued Keen for infringement. Keen acquired Inforocket, thereafter, Inforocket dismissed the infringement suit against Keen in 2003.  Keen later reincorporated as Ingenio, Inc.

The real-parties-in-interest continued to evolve in this case. The ’836 patent, through a series of corporate transactions, came to be held by Click-To-Call Technologies (CTC).  Ingenio similarly went through a series of corporate transactions to become Thryv, Inc. – Ingenio first merged with Dex Media, which then acquired YP Holdings (formerly Yellow Pages) to form DexYP, and finally rebranded to Thryv in 2019.

CTC sued multiple entities, including Ingenio, in 2012. When Ingenio filed an IPR petition on the ’836 patent in 2013, CTC immediately argued that Ingenio’s petition was time-barred due to the 2001 suit against Ingenio’s predecessor. The PTAB rejected CTC’s argument that the petition was time-barred, reasoning that because the 2001 case was voluntarily dismissed without prejudice, the parties’ rights were unaffected as if the action had never been brought. Oracle Corp. et al. v. Click-To-Call Technologies LP, Case IPR2013-00312, Paper 26, 17 (PTAB, Oct. 30, 2013). The PTAB instituted review, eventually invalidating the claims of the ’836 patent. Paper 52, 27 (PTAB, Oct. 28, 2014). CTC appealed, but the Federal Circuit dismissed the appeal for lack of jurisdiction under 35 U.S.C. § 314(d). Click-to-Call Techs., LP v. Oracle Corp., 622 F. App’x 907 (Fed. Cir. 2015). Down to its last argument, CTC petitioned for a writ of certiorari.

Meanwhile, the Supreme Court decided Cuozzo Speed Technologies, LLC v. Lee, 136 S.Ct. 2131, 195 L.Ed.2d 423 (2016) — holding that the IPR intuition decision was not appealable — under which the court vacated the Federal Circuit’s judgment against CTC and remanded for further review. On remand, a Federal Circuit panel held that the PTAB’s time-bar determination was not subject to judicial review. Click-to-Call Techs., LP v. Oracle Corp., No. 2015-1242, 2016 WL 6803054 (Fed. Cir. Nov. 17, 2016).

Contemporaneously, the full Federal Circuit decided the issue differently, holding that time-bar determinations were subject to judicial review because they were not “closely related” to the institution decision falling within the scope of § 314(a). Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018) (en banc). Under Wi-Fi One, the Federal Circuit reheard CTC’s appeal, vacated the PTAB’s decision and remanded for further proceedings. 899 F.3d 1321 (Fed. Cir. 2018). Further appeals led to the instant decision, holding that the PTAB’s procedural time-bar determinations, like the substantive decisions on whether to institute, are not reviewable. Thryv, Inc v. Click-To-Call Techs., LP, No. 18-916, 2020 WL 1906544 (U.S. Apr. 20, 2020).

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