{"id":2799,"date":"2020-04-21T03:09:00","date_gmt":"2020-04-21T08:09:00","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2799"},"modified":"2020-05-03T20:15:16","modified_gmt":"2020-05-04T01:15:16","slug":"wrong-or-even-purposefully-evasive-decisions-on-ipr-time-bar-are-not-reviewable","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2799","title":{"rendered":"Wrong or Even Purposefully Evasive Decisions on IPR Time Bar Are Not Reviewable"},"content":{"rendered":"\n

In Thryv, Inc., v. Click-To-Call Technologies, LP, [18-916]<\/a> (April 20, 2020), the Supreme Court vacated the Federal Circuit’s decision vacating the PTAB’s Final Written Decision invalidating claims of U.S. Patent No. 5,818,836 relating to a technology for anonymous telephone calls.<\/p>\n\n\n\n

Entities associated with Thryv, Inc. sought inter partes review of the ‘836 patent, and patent owner Click-to-Call argued that the petition was untimely under \u00a7315(b). The PTAB disagreed and instituted review, eventually issuing a final written decision reiterating its \u00a7315(b) decision and finding 13 of the patent\u2019s claims unpatentable. Click-to-Call appealed the Board\u2019s \u00a7315(b) determination. Treating the Board\u2019s application of \u00a7315(b) as judicially reviewable, the Federal Circuit concluded that the petition was untimely, vacated the Board\u2019s decision, and remanded with instructions to dismiss.<\/p>\n\n\n\n

The Supreme Court held that 35 USC \u00a7314(d), which precludes judicial review of the USPTO’s institution decision, applies to \u00a7315(b)\u2019s time prescription, and vacated the Federal Circuit’s decision and remanded.<\/p>\n\n\n\n

The issue was whether a challenge based on \u00a7315(b) ranks as an appeal of the agency\u2019s decision \u201cto institute an inter partes review.\u201d \u00a7314(d). The Supreme Court found no need to venture beyond Cuozzo\u2019s<\/em> holding that \u00a7314(d) bars review at least of matters \u201cclosely tied to the application and interpretation of statutes related to\u201d the institution decision, because a \u00a7315(b) challenge easily meets that measurement. Section 315(b), sets forth a circumstance in which \u201c[a]n interpartes review may not be instituted,\u201d expressly governs institution and nothing more.<\/p>\n\n\n\n

The Supreme Court said that this conclusion is strongly reinforced by the statute\u2019s purpose and design. Congress designed inter partes review to weed out bad patent claims efficiently. Allowing \u00a7315(b) appeals, however, would unwind agency proceedings determining patentability and leave bad patents enforceable.<\/p>\n\n\n\n

The Supreme Court rejected Click-to-Call\u2019s argument that \u00a7314(d)\u2019s bar on judicial review was limited to the USPTO’s threshold determination under \u00a7314(a) of whether the petitioner has a reasonable likelihood of prevailing. Finding Cuozzo<\/em> is “fatal” to that interpretation.<\/p>\n\n\n\n

Justice Gorsuch and Sotomayor dissented, with a persuasive explanation of not just how the majority got it wrong, but also why they are wrong, noting: “No matter how wrong or even purposefully evasive, the Director\u2019s assessment of a petition\u2019s timeliness is always immune from review.” According to Gorsuch and Sotomayor it was only the initial determination of a reasonable likelihood of success that was insulated from review, since this would necessarily be reviewed as part of the review of the Final Written Decision.<\/p>\n\n\n\n

There just seems to be something wrong in allowing an administrative agency to determine an issue of law outside of its expertise (the significance of service of a complaint), and then barring the courts from reviewing it. It is bad policy to insulate the patent office from review, and bad precedent to insulate any administrative agency from review.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Thryv, Inc., v. Click-To-Call Technologies, LP, [18-916] (April 20, 2020), the Supreme Court vacated the Federal Circuit’s decision vacating the PTAB’s Final Written Decision invalidating claims of U.S. Patent No. 5,818,836 relating to a technology for anonymous telephone calls. … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"class_list":["post-2799","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2799","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2799"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2799\/revisions"}],"predecessor-version":[{"id":2800,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2799\/revisions\/2800"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2799"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2799"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2799"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}