April 20, 2020
Today, in Thryv Inc. v. Click-To-Call Technologies, LP, the U.S. Supreme Court held that if the Patent Trial and Appeal Board (PTAB) determines that an inter partes review proceeding is timely, the federal courts may not review this determination on appeal. In a footnote, the Court left open the possibility for a writ of mandamus in such cases. Two justices dissented, basing their analysis on the historic presumption of judicial review.
There is some tension between the Supreme Court and its decision in Cuozzo Speed Technologies, LLC v. Lee and the Federal Circuit in some subsequent decisions, such as Samsung Electronics America, Inc. v. Prisua Engineering Corp. The Cuozzo decision is deferential to the PTAB and stands against the idea of judicial review of its decisions, while later Federal Circuit cases have, to some extent, chipped away at the Cuozzo doctrine. One of those Federal Circuit cases, Wi-Fi One, LLC v. Broadcom Corp, reported earlier here, is overruled by today’s case.
Fitch Even’s earlier alert on the Click-to-Call case is reported here. Although the Court today held that the PTAB’s time-bar determination in favor of the challenger is not reviewable, the guidance in the previous alert remains valid: Parties considering filing an IPR petition should be careful not to co-file a petition with another party that could be time-barred. Conversely, patent owners served with a petition should investigate whether any petitioner or related party might be time-barred early in the proceedings. Even though a court may not have the opportunity to review the decision of the PTAB on these questions, the PTAB itself will make the time-bar determination and may be influenced by the presence of another party in the proceeding.