“I'm willing to admit that I may not always be right, but I am never wrong,” Samuel Goldwyn once said, and the same is true for the Patent Trial and Appeal Board (PTAB) when it comes to determining the timeliness of inter partes review (IPR) petitions. In Thryv, Inc. v. Click-to-Call Technologies, LP, et al., the Supreme Court (in a 7-2 decision) held that PTAB decisions regarding applicability of the time bar under 35 U.S.C. §315(b) are not appealable. IPR is an administrative process that allows a challenger to request the USPTO reconsider the validity of prior granted patent claims. Under 35 U.S.C. §315(b), an IPR may not be instituted against a patent if the request is made more than one year after the requesting party was served a complaint alleging infringement of the patent.

Thryv, Inc. petitioned for IPR of a patent owned by Click-to-Call Technologies, LP. Click-to-Call argued that Thryv’s petition was untimely under §315(b) due to a suit filed against Thryv several years before. The PTAB disagreed and instituted an IPR, returning a decision canceling 13 of Click-to-Call’s patent claims as obvious or lacking novelty. Click-to-Call appealed challenging the PTAB’s determination that §315(b) did not preclude IPR. The Court of Appeals initially dismissed the case for lack of jurisdiction. However, Thryv’s victory was short lived. In another case, the Federal Circuit held in an en banc decision that “time-bar determinations under §315(b) are appealable” (Wifi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1367 (2018)). In light of this new ruling, the Federal Circuit granted rehearing in the case and subsequently held that the PTAB erred by allowing IPR because the petition was untimely under §315(b).

To quote Lee Corso on ESPN’s College Gameday: “Not so fast my friend.” The Supreme Court granted certiorari, and last week it reversed the Federal Circuit’s holding. The Supreme Court began its analysis by reviewing the language of §314(d), which states, “The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” The Supreme Court concluded that the plain language of §314(d) indicates that a party generally cannot appeal a PTAB decision to institute IPR. The court then analyzed whether a challenge based on §315(b) constituted a challenge of a decision to institute IPR. The court held that because §315(b)’s time limitation is a condition of institution, a contention that a petition is untimely under §315(b) is a contention that IPR should have been refused.

The court also analyzed the policy purposes behind Congress’ establishment of IPRs in the America Invents Acts (AIA). IPR was established under the AIA to efficiently weed out bad patent claims; allowing judicial review of §315(b) would reduce efficiency and waste resources by allowing bad patents to remain enforceable. Moreover, the court reasoned that judicial review of §315(b) is not necessary to protect patent claims from wrongful invalidation because patent owners are still free to appeal final decisions on the merits. In addressing Click-to-Call’s contention that the judicial review bar only applies to the question of whether the petitioner has a reasonable likelihood of prevailing, the court held that the provisions of §314(d) are not limited to a reasonable likelihood determination. The provisions sweep more broadly and encompass the entire determination to institute IPR. Additionally, the court rejected Click-to-Call’s argument based on §319, which permits appeal of PTAB final written decisions. Click-to-Call argued that since the PTAB’s final written decision addressed the §315(b) issue, the time bar decision was appealable. However, the court held that regardless of the final written decision, Click-to-Call’s contention remains that the PTAB should have refused IPR, which is not reviewable.

When it comes to timeliness of IPR petitions, what the PTAB says goes. PTAB decisions regarding the timeliness of petitions for IPR under §315(b) are not subject to judicial review in light of §314(d).