In the first half of 2020, several notable decisions further shaped the course of patent law, with rulings from the Supreme Court and Federal Circuit impacting PTAB proceedings, as described below:

Thryv. Inc. v. Click-to-Call Technologies L.P. (U.S. Supreme Court)

In April, the U.S. Supreme Court decided by a vote of 7-2 that when the PTAB grants a petition for inter partes review and rejects a contention that the petition is time-barred, the Board’s decision cannot be appealed. The high court reasoned that because 35 U.S.C. § 314(d) states that the PTAB’s decisions regarding whether to institute inter partes review of a patent are “final and non-appealable,” matters closely tied to that finding are similarly not appealable.

In so holding, the Supreme Court reversed the Federal Circuit’s decision that allowed appeals based on the untimely filing of petitions, eliminating an avenue of attack by patentees against petitioners. 

ESIP Series 2 L.L.C. v. Puzhen Life USA LLC (Federal Circuit)

In May, the Federal Circuit extended Click-to-Call by affirming an inter partes review decision that found the challenged claims obvious. In ESIP v. Puzhen, the Federal Circuit held that patent owners are precluded on appeal from arguing that a petitioner failed to satisfy the requirement of identifying all real parties-in-interest as required by 35 U.S.C. § 312(a)(2). 

The Federal Circuit reasoned that since the PTAB’s finding raised an ordinary dispute regarding the application of an institution-related statute, the appellate review was barred by § 314(d).

Samsung Electronics America v. Prisua Engineering Corp. (Federal Circuit)

In February, the Federal Circuit in Samsung v. Prisua ruled that the PTAB cannot invalidate patents during most inter partes reviews for claims that are indefinite, thereby confirming that invalidity arguments are limited to anticipation and obviousness.

A 2005 Federal Circuit case, IPXL Holdings, L.L.C. v. Amazon.com, Inc., concerned claims that were ambiguous regarding whether they covered a system or a method. The court held the ambiguous claims were indefinite because a member of the public would not be apprised of what acts constitute infringement. Similarly, in this recent case, the PTAB in Samsung v. Prisua held the ambiguous claims in the patent at issue were indefinite.  

Of further note, and despite cases holding that indefinite terms cannot be applied to the prior art, the PTAB has previously held in Vibrant Media, Inc. v. Gen. Elec. Co. that IPXL-type indefiniteness does not preclude the PTAB from addressing patentability by comparison of those ambiguous terms to the prior art. Therefore, the PTAB in Samsung v. Prisua ultimately held that if an IPXL-type indefiniteness issue arises, the claim can still be analyzed by comparison to the prior art in an inter partes review, but that for all other types of indefiniteness issues, the Board should decline to institute review or should not reach a patentability decision under §§ 102 and 103.