Today, the Supreme Court held that a Patent Trial and Appeal Board determination of whether an inter partes review petition is timely filed under 35 U.S.C. § 315(b) is not judicially reviewable, pursuant to § 314(d). In so holding, the Court overruled the Federal Circuit’s en banc determination in Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (2018) that time-bar determinations under § 315(b) are reviewable, at least on review of a final written decision.
According to 35 U.S.C. § 315(b), an inter partes review may not be instituted if the petition is filed more than one year after the petitioner, its privy, or other real party in interest is served with a complaint alleging infringement of the challenged patent. Section 314(d), titled “No Appeal,” states that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” And in Cuozzo Speed Techs., LLC v. Lee, 579 U.S. ___ (2016), the Supreme Court held that § 314(d) precludes judicial review of matters “closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate an inter partes review.”
Notably, neither Thryv nor Wi-Fi One concerned an attempt by a petitioner to appeal the denial of an institution decision based on the time bar—i.e., a direct appeal from the institution decision itself. Rather, in both Thryv and Wi-Fi One, the IPR was instituted over the patent owner’s argument that institution would be improper because of the time bar. Both cases proceeded through trial to a final written decision holding claims invalid, and the patent owner in each case appealed the final written decision, arguing the time-bar issues as part of the appeal of the final written decision. Wi-Fi One had broken ground by holding that, notwithstanding Section 314(d)’s “no appeal” prohibition, the PTAB’s time-bar decision was reviewable as part of an appeal of a final written decision. The Supreme Court’s decision in Thryv foreclosed such an avenue for review of time-bar decisions by patent owners, essentially leaving the PTAB as the final arbiters of the scope, bounds, and application of Section 315(b), including what it means to be in “privity” or a “real party in interest.”
The patent owner in Thryv, Inc. argued that § 314(d)’s reference to decisions to institute “under this section” limited the proscription against judicial review to the agency’s determination under § 314(a) of whether the petitioner has a reasonable likelihood of prevailing on the merits. The majority rejected this argument, noting that Cuozzo also did not involve a decision pursuant to Section 314. Rather, it involved a determination under § 312(a)(3) of whether the petition had stated grounds for its challenge “with particularity,” which the Court had held was non-appealable under § 314(d). Observing that “every decision to institute is made ‘under’ § 314 but must take account of specifications in other provisions,” the Court found that time-bar determinations under § 315(b) fell squarely within the ambit of Cuozzo’s holding that § 314(d) precludes judicial review of ordinary disputes about the application of institution-related statutes.
The majority explained that its holding was consistent with the purpose and design of the America Invents Act, which was intended to efficiently weed out bad patent claims. If the AIA permitted judicial review of agency determinations that petitions are not time-barred, the Court noted, successful appeals would result in vacatur of decisions cancelling invalid claims, unwinding the Board’s merits determination and leaving bad patent claims intact. The majority also reviewed other features of the AIA statutory framework as supporting its decision.
Justice Ginsburg delivered the opinion of the Court, joined by Justices Roberts, Breyer, Kagan, and Kavanaugh, and joined in part by Justices Thomas and Alito. Justice Gorsuch, joined in part by Justice Sotomayor, filed a dissenting opinion.
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