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On Dec. 9, 2019, the U.S. Supreme Court heard argument in Thryv, Inc. v. Click-to-Call Technologies, LP, a case involving a dispute over certain appeal and time restrictions applicable to “inter partes review” (IPR) proceedings before the Patent Trial and Appeal Board (the Board) of the U.S. Patent and Trademark Office.

In 2013, Ingenio--a predecessor entity to petitioner Thryv, Inc.--initiated IPR proceedings to challenge the validity of a patent held by Click-to-Call Technologies, LP (CTC).  CTC countered that the IPR was time-barred under the one-year limit of 35 U.S.C. § 315(b), because a complaint alleging infringement of that patent had been served on Ingenio back in 2001, well over one year before the IPR request.  The Board rejected CTC’s argument, reasoning that the time bar did not apply because the complaint in question had been voluntarily dismissed, and was to be treated as if non-existent. Proceeding with IPR, the Board then ruled various claims of the disputed patent to be unpatentable.  

After a complicated series of appellate proceedings that included a vacatur and remand from the U.S. Supreme Court, the U.S. Court of Appeals for the Federal Circuit issued the en banc decision that formed the basis for Thryv’s certiorari petition in this case.  Citing a recent determination it had made in a similar case, the court first decided that it had jurisdiction to review the IPR time-bar dispute. Title 35 U.S.C. § 314(d) provides that a decision whether to institute an IPR “shall be final and nonappealable,” but the court treated that bar as inapplicable to questions of timeliness as opposed to the merits.  The Federal Circuit then held that the time bar of § 315(b) was triggered by service of any complaint, even one later dismissed without prejudice.  Accordingly, the court vacated the Board’s decision and remanded with instructions to dismiss the IPR as time-barred: a victory for CTC.  But the Supreme Court then granted Thryv’s certiorari petition to address anew the key jurisdictional issue: whether 35 U.S.C. § 314(d) permits appeal of the Board’s decision to institute an IPR upon finding that § 315(b)’s time bar did not apply.

To discuss the case, we have Robert J. Rando, Founder and Lead Counsel, the Rando Law Firm P.C.

As always, the Federalist Society takes no particular legal or public policy positions. All opinions expressed are those of the speakers.