Thryv, Inc. v. Click-to-Call Technologies, LP

PATENT – ARGUMENT: DEC. 9, 2019

Issue: Whether 35 U.S.C. § 314(d) permits appeal of the Patent Trial and Appeal Board’s decision to institute an inter partes review upon finding that 35 U.S.C. § 315(b)’s time bar did not apply.

Under 35 U.S.C. § 315(b), a petition for inter partes review is time-barred if “filed more than 1 year after the date on which the petitioner…is served with a complaint alleging infringement of the patent.” “The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” 35 U.S.C. § 314(d).

Respondent Click-to-Call Technologies filed a patent infringement action against the predecessor to petitioner Thryv, and the petitioner filed an IPR petition with the PTAB. Because of an earlier voluntarily dismissed patent infringement lawsuit involving the same patent and the parties’ predecessors, the respondent challenged the petition as time-barred under 35 U.S.C. § 315(b). Rejecting Click-to-Call’s challenge, the PTAB issued a final written decision finding each challenged claim unpatentable.

The Federal Circuit initially dismissed Click-to-Call’s appeal for lack of appellate jurisdiction

The Federal Circuit initially dismissed Click-to-Call’s appeal for lack of appellate jurisdiction under 35 U.S.C. § 314(d). Following Wi-Fi One, LLC v. Broadcom Corp., 837 F.3d 1329 (Fed. Cir. 2016), the Federal Circuit vacated the dismissal, granted panel rehearing, and issued a divided (7-2) en banc opinion finding the petition was time barred, and remanded for dismissal by the PTAB.

On appeal, Thryv argues that § 314(d) bars the Federal Circuit’s review of the PTAB decision to institute the IPR because the plain language of the statute and the Supreme Court’s Cuozzo decision bar appeal. In Cuozzo, the Court held § 314(d) bars appeal of an IPR institution decision. Thryv thus argues that the Federal Circuit’s Wi-Fi One decision, which permits appeal of time-bar determinations under § 315(b), is inconsistent with Cuozzo and was incorrectly decided. Click-to-Call argues this reading of § 314(d) is too expansive and would insulate the PTAB from any determinations of its statutory authority to institute an IPR.

Romag Fasteners, Inc. v. Fossil, Inc., et al.

TRADEMARK – ARGUMENT: JANUARY 14, 2020

Issue: Whether, under 15 U.S.C. § 1117(a) of the Lanham Act, willful infringement is a prerequisite for an award of an infringer’s profits for a violation of Section 43(a), 15 U.S.C. § 1125(a).

The Lanham Act entitles a plaintiff to recover a defendant’s profits “subject to the principles of equity” for “a violation under section 1125(a) or (d) of this title, or a willful violation under section 1125(c) of this title.” 15 U.S.C. § 1117(a). Section 1125(a) creates a federal cause of action for false representations regarding the origin, endorsement, or association of goods through the use of another’s mark; 1125(c) was later added to create an action for trademark dilution.

Romag contends there is an intractable split among the Circuit Courts of Appeals

The jury in a patent and trademark suit filed by Romag against Fossil returned a verdict finding trademark infringement under 1125(a) and awarded lost profits to Romag, among other remedies. However, the jury did not find willful infringement, which the district court ruled was required for an award of profits under Second Circuit precedent interpreting 1125(a). The court thus struck the jury’s profit award. The Federal Circuit affirmed.

On appeal, Romag contends there is an intractable split among the Circuit Courts of Appeals. The Third, Fourth, Fifth, Sixth, Seventh, and Eleventh Circuits do not require plaintiffs to show willfulness before considering whether to award profits under 1125(a), and instead follow a multifactor approach in which a finding of willfulness is an important equitable factor, but not dispositive. The First, Second, Eighth, Ninth, Tenth, and DC Circuits require a threshold showing of willfulness before allowing an award of profits. Romag argues the Second Circuit’s approach, applied by the Federal Circuit, is contrary to the plain language of § 1117(a), which allows profits for “a violation under 1125(a)” as distinguished from “a willful violation under section 1125(c).”

Fossil argues the circuits are not meaningfully split. 1125(a) requires an analysis of “the principles of equity,” and the circuits simply apply different weight to a willfulness finding, which is not practically meaningful because willfulness is found in the “overwhelming majority” of cases when profits are awarded. Fossil argues the decision below is correct because willfulness was a prerequisite to profits at common law, as codified in the statute by the “principles of equity” language. According to Fossil, the amendment to § 1117(a) in 1999, to add the 1125(c) language, was not intended to change the common law equity analysis as to 1125(a).