If the Patent Trial and Appeal Board (PTAB) determines that a petitioner has filed its IPR petition too late, can the petitioner appeal that determination? The Supreme Court will answer that question this term in Thryv, Inc. v. Click-to-Call Techs., L.P., No. 19-916.

The case involves two statutory provisions. The first is a time bar: under 35 U.S.C. § 315(b), an IPR cannot be instituted if the petitioner files its petition more than 1 year after being served with a patent infringement complaint. The second, 35 U.S.C. § 314(d), provides that the “determination by the Director whether to institute” an IPR “under this section shall be final and nonappealable.”

A divided Federal Circuit, en banc, considered both provisions in Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed Cir. 2018) (en banc). The 8-4 majority in Wi-Fi One, relying on the strong presumption favoring judicial review of administrative determinations, held that time-bar determinations under § 315(b) are appealable. The four dissenters believed the majority’s conclusion contradicted not only the statutory language but also the Supreme Court’s construction of that language in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016). In Cuozzo, the Court held that § 314(d) applied to any questions “closely tied” to the decision to institute—and the Wi-Fi One dissenters thought that timeliness under § 315(b) was so “closely tied.”

Thryv’s story begins long before either decision. In 2001, Inforocket.com, Inc. sued Keen, Inc. alleging patent infringement of U.S. Patent No. 5,818,836 (the ’836 patent). Two years later, Keen acquired Inforocket.com, voluntarily dismissed the case, and changed its name to Ingenio, Inc. In 2011, Click-To-Call Technologies acquired the ’836 patent and subsequently filed suit against Ingenio, among others, alleging patent infringement.1

In response to Click-To-Call’s complaint, Ingenio filed an IPR petition challenging the ’836 patent. Click-To-Call invoked § 315(b), arguing that Ingenio had been served with an infringement complaint in 2001—when Inforocket.com sued Keen. The Board disagreed, instituted the IPR, and found many claims of the ’836 patent unpatentable. Click-To-Call appealed to the Federal Circuit, which held, en banc, that under Wi-Fi One it could review the Board’s § 315(b) time bar determination notwithstanding § 314(d). Upon rehearing, a Federal Circuit panel found the Board should not have instituted because the petition was time-barred by the 2001 suit against Thryv’s predecessor Keen. Thryv filed a petition for certiorari, which the Court granted.

In its briefs before the Court, Thryv focuses on the “categorical” statutory language of § 314(d). Any presumption of administrative reviewability, Thryv argues, is overcome by what it describes as clear and convincing indications of Congressional intent in the language and purpose of the AIA.

Click-to-Call’s briefs also focus on statutory language—specifically, the portion of § 314(d) providing that institution decisions “under this section” are nonappealable. The time bar provisions in § 315(b), Click-To-Call argues, are clearly not “under [that] section.” When combined with the strong presumption favoring judicial review of administrative agency determinations, this language indicates that the Board’s § 315(b) decisions are indeed reviewable.

The USPTO intervened, arguing alongside Thryv that the Board’s determination whether an IPR is time-barred under § 315(b) is unreviewable based on the text, history, and purpose of the AIA, as well as Cuozzo. The government also argued that the USPTO has implemented new procedures for review since Thryv filed its petition, potentially rendering the issue on appeal moot.

Many amicus briefs were filed on both sides of the case, indicating its importance to those interested in patent or administrative law. Thryv, Click-To-Call, and the USPTO will participate in oral argument on December 9.