Courthouse Steps Oral Argument Teleforum: Thryv, Inc. v. Click-To-Call Technologies, LP

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In Thryv, Inc. v. Click-To-Call Technologies, LP (originally Dex Media Inc. v. Click-To-Call Technologies, LP), the Supreme Court will determine whether the decision to institute an inter partes review (“IPR”), which is argued to be time barred under 35 U.S.C. § 315(b) as filed beyond the one-year date the complaint for infringement was served on the petitioner, may be subject to judicial review after a final written decision of the PTAB to determine whether the petition for IPR was time-barred, despite the language of 35 U.S.C. § 314(d) that prohibits appeal of the USPTO Director’s determination whether to institute an IPR.

The case presents issues of statutory interpretation, judicial review and the Administrative Procedure Act (“APA”), and agency action in light of “statutory jurisdiction, authority, or limitations, or short of statutory right.” APA Section 706(2)(C).

The question presented is: 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. 

Please join our expert, Rob Rando, in a discussion of the oral argument. Mr. Rando is co-Counsel on an amicus brief filed on behalf of the New York Intellectual Property Law Association (“NYIPLA”) in this case.

 

Featuring:

 

Mr. Robert J. Rando, Founder and Lead Counsel, the Rando Law Firm P.C. 

 

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Event Transcript

Operator:  Welcome to The Federalist Society's Practice Group Podcast. The following podcast, hosted by The Federalist Society's Intellectual Property Practice Group, was recorded on Thursday, December 12, 2019, during a live teleforum conference call held exclusively for Federalist Society members.          

 

Wesley Hodges:  Welcome to The Federalist Society's teleforum conference call. This afternoon's topic is a "Courthouse Steps Oral Argument Discussion on Thryv, Inc. v. Click-To-Call Technologies." My name is Wesley Hodges, and I am the Associate Director of Practice Groups at The Federalist Society.

 

      As always, please note that all expressions of opinion are those of the expert on today's call.

 

      Today, we are very fortunate to have with us Mr. Robert J. Rando, who is the Founder and Lead Counsel for the Rando Law Firm. He also is co-counsel on an amicus brief filed in the case. After our speaker gives his remarks, we will have time for your questions, so please keep in mind what you would like to ask for the very end of the call.

 

Thank you very much for sharing with us today. Rob, the floor is all yours.

 

Robert J. Rando:  Thank you, Wes, and good afternoon. I'd like to thank The Federalist Society for the opportunity to discuss this case with those on the call.

 

      The Thryv, Inc. v. Click-To-Call case is an important and interesting case for several reasons. It presents serious issues regarding the tension between congressional granted agency autonomy and the limit on the autonomy forced by judicial review, the scope of administrative power, the integration of individual provisions of a statute with respect to congressional intent and purpose, and the practical consequences of a ruling one way or the other.

 

      Now, before we get into those issues and the parties' arguments and the oral arguments this week, a little background on the case, which has a lengthy history. Inforocket Com Inc. was the original licensee of the patenting suit, the 836 Patent. In '01, Inforocket filed suit against Keen Inc., alleging Keen's infringement of the 836 Patent.

 

      After a period of litigation, the parties eventually agreed to a voluntary dismissal without prejudice when the two companies merged in '03. The merged company renamed itself Ingenio, Inc., which then went through a series of ownership changes. In 2012, Click-To-Call Technologies, our respondent in the Supreme Court, acquired the 836 Patent and filed suit in the Western District of Texas, alleging an infringement of the 836 Patent against multiple defendants, including Ingenio.

 

      Within a year, several of the alleged infringers, including Ingenio, the now petitioner in the Supreme Court, Thryv, Inc., petitioned the PTAB for an IPR, inter partes review. In response, Click contended that 35 U.S.C. 315(b), which requires a party to request an IPO within one year of being served with the complaint alleging infringement of the patent, prohibited the IPR proceeding. Click contended that Section 315(b)'s one-year limitations period had long expired because a predecessor company had been served with a complaint alleging infringement of the 836 Patent in the '01 Inforocket suit.

 

      Well, acknowledging that Ingenio had been so served in '01, the board determined that Ingenio could nevertheless proceed with an IPR. The board determined that because the Inforocket suit had been voluntarily dismissed without prejudice, effective service of the '01 complaint was nullified.

 

      Click requested a rehearing of the board Section 315(b) conclusion. The board refused their request. The board then issued a final written decision where it reaffirmed its interpretation of 315(b). Click appealed to the Fifth Circuit, which initially dismissed Click's appeal for lack of appellate jurisdiction. Click then petitioned the Supreme Court, which vacated the Fifth Circuit's dismissal and remanded the case for reconsideration due to its intervening decision in Cuozzo v. Lee.  

 

      On remand, the Fifth Circuit again dismissed for lack of jurisdiction. Click then petitioned the Fifth Circuit for rehearing en banc, which it granted in light of its decision in Wi-Fi One v. Broadcom, which removed the jurisdictional bar for Click's appeal. On rehearing, the Fifth Circuit held that the '01 Inforocket complaint was sufficient to trigger 315(b)'s limitation's period, notwithstanding the voluntary dismissal. The Fifth Circuit vacated the board's final decision and remanded with directions for the board to dismiss the IPR proceeding.

 

      Supreme Court granted cert in this matter on June 24, 2019. So the Supreme Court will determine whether the decision to institute an inter partes review, which is argued to be time barred under Section 315(b) as filed beyond the one-year date the complaint for infringement was served on the petitioner, may be subject to judicial review at the final written decision of the PTAB and whether judicial review of this issue is warranted, despite the language of 35 U.S.C. 314(d) prohibiting appeal of the USPTO director's determination whether to institute an IPR.

 

      This case involves the integration of two statutory provisions. The first is the time bar. Under 315(b), the IPR cannot be instituted if petitioner filed its petition more than one year after being served with a patent infringement complaint. The second, 314(d), provides that the determination by director whether to institute an IPR under this section shall be final and unappealable. So the question before the Court as framed by the parties is whether 35 U.S.C. Section 314(d) permits appeal of the Patent Trial and Appeal Board's decision to institute an inter partes review upon a finding that 35 U.S.C. Section 315(b)'s time bar did not apply.

 

      Before getting into the oral argument, I believe it's helpful to go through the arguments that were presented by that parties' briefing. The petitioner in his brief offered several arguments. First, they argued that while the Court presumes that a statute provides for judicial review of agency decisions, that the presumption is overcome when there are clear and convincing indications that Congress intended to preclude judicial review and that the AIA contains clear and convincing indications that Congress intended to preclude judicial review of the PTAB’s determination that Section 315(b)'s time bar does not apply. They point out that Section 315(b) identifies particular circumstances which an IPR "may not be instituted," and in Section 314(d) precludes judicial review of, quote, the “determination whether to institute an inter partes review.”

 

      They go on to say that the decision whether the 315(b) time bar applies is an integral part of the institution decision. It is a condition precedent for institution, and Congress specifically contemplated that the patent owner would assert the time bar in its response to the petition filed under Section 313. And it directed the agency to consider this response in deciding whether to institute the IPR.

 

      They argued further that this reading of 314(d) is confirmed by the appeal provisions of the AIA, which provide for judicial review only at the final patentability determination. Second, petitioner relies on the Court's decision in Cuozzo to support the conclusion that 314(d) precludes judicial review of PTAB's decision that 315(b)'s time bar didn't apply.

 

      Quoting Cuozzo as holding that 314(b) applies to a statute, quote, "closely tied to the application and interpretation of the statutes related to the patent office's decision to initiate inter partes review," close quote. They characterize Section 315(b) as a condition precedented institution and thus such a statute, and that the PTAB's decision that 315(b) is inapplicable to a patent infringement complaint subsequently dismissed without prejudice does not fall within the exceptions to non-reviewability recognized in Cuozzo.

 

      They go on to argue that the Court's decision in SAS v. Iancu did not alter the holding in Cuozzo, that Section 314(d) precludes judicial review with a question that's closely tied to the decision to institute the IPR. And they point out that SAS involved a provision of the AIA, 318(a), that becomes relevant after the institution decision is made and allows judicial review because the provision to find the scope of an IPR that has been instituted; in other words, the what to determine in the IPR rather than whether to institute the IPR.

 

      Specifically, the one-year time bar in 315(b) implicates whether review can be instituted in the first place, not the scope of the IPR trial after the IPR begins. Thus, they argue that together, Cuozzo and SAS confirm the PTAB's patentability decisions, made it step two of the IPR process, are reviewable, but the board's preliminary procedural decisions made it step one of the IPR process, including time bar determinations are unreviewable.

 

      Third, they argue that in light of AIA's plain language and the Court's decision in Cuozzo, the Fifth Circuit's justifications for permitting judicial review of time bar determinations under 315(b) are without merit and that the Fifth Circuit held that appellate review is prescribed only for determinations closely related to the board's preliminary patentability determination and that this holding is inconsistent with both the language of the statute and the Court's decision in Cuozzo.

 

      Petitioner also argued that the overall purpose of AIA confirms 314(b) was meant to preclude judicial review of timeliness determinations under 315(b), that Congress intended AIA to provide quick and cost-effective alternatives to litigation in federal court, and its purpose would be eviscerated by allowing the Fifth Circuit to overturn the PTAB's patentability decisions based on preliminary procedural rulings. And it would require re-litigation of patentability findings already made by the expert agency.

 

      They thought it disagreed with the agency's preliminary procedural rulings would not only be inefficient and a waste of PTAB's vast resources, but also harmful to the public interest, allowing patent owners to enforce invalid patents. And finally, that permitting judicial review of 315(b) determinations would open a Pandora's box of appellate litigation over tangential procedural issues decided at the institution stage and thereby increase the cost and undermine the efficiency of IPRs.

 

      Now, the government also filed a brief and also participated in oral argument in the case. In the government's brief, they offered several arguments in support of the petitioner that PTO's determination whether a petition for its partes review is time barred is not judicially reviewable. First, the government argued that the text, structure, and history of the AIA demonstrate that the PTO's Section 315(b) determinations are not reviewable, that 314(d) states that the director's determinations shall be final and not appealable with respect to instituting the IPR. And Section 315(b) speaks directly and exclusively to the director's decision whether to institute.

 

So a contention that the director unlawfully instituted review based on a misapplication of 315 is non-appealable pursuant to the plain text of Section 314 and also that the broad scope of 314(d) is confirmed by comparison to Section 303(c), which precludes judicial review at the Director's decision to institute a different form of post-issuance review known as ex parte reexam. 303 precludes review only at the Director's determination specifically that, quote, "no substantial new question of patentability has been raised," close quote. And that enacting 314(d), Congress used markedly different and more expansive language and that the broad scope of Section 314(d) is clear from the history of the similar provisions in the AIA.

      They point to the former Section 312(c), similarly limited judicial review of Director's decision to institute the precursor to IPRs known as inter partes reexam. Former 312(c) precluded review only of the Director's determination, quote, "whether a substantial new question of patentability," close quote, had been raised about the challenged patent. They also argued that in the AIA, Congress created a host of prerequisites for instituting IPRs that did not exist for ex parte or inter parte reexams.

      In the same statute, Congress directed that the determination by the director whether to institute into the partes review shall be final and non-appealable. And if Congress had intended to preclude judicial review only at the director's threshold patentability determination and not the prerequisites to institution, it could easily have adopted the same language of former Section 312(c) and just used the reasonable likelihood standard but chose broader language.

      Second, the government echoed petitioner's argument that the Court's decision in Cuozzo confirmed the PTO's Section 315(b) determination was not reviewable, that the Court made clear that 314 applies where the grounds for attacking the decision to institute inter partes review consists of questions that are closely tied to the application and interpretation of statutes related to the Patent Office's decision to initiate IPRs.

      So in Cuozzo, the Court found that the challenge to PTO's institution decision based on an alleged misapplication of particularity requirement in 312(a)(3) was unreviewable on appeal from the board's final written decision. The government likened Section 312(a)(3) particularity requirement to 315(b) as involving a question closely tied to the application interpretation of statutes relating to Patent Office's decision to initiate the IPR.

      And the government also distinguished SAS v. Iancu. In SAS, the Court held that the board had violated Section 318(a) by failing to address its final written decision. All of the patent claims that have been challenged in the petition for IPR and that the Court in SAS held that Section 314 authorized Director determined whether to institute or question review, not whether and to what extent review should proceed, and noted that SAS did not challenge the agency's determination whether a review should be instituted, only the scope of what that review should be. However, by contrast, respondent argues that the reviewing issue here should not have been instituted at all whether or not to what extent its partes review should've been instituted. And that is precisely the determination in Section 314(d) precludes from judicial review.

      Third, like the petitioner, government argues precluding review of PTO's Section 315(b) determination is consistent with the purpose of the AIA, allowing judicial review of Click-To-Call's challenge to the board's institution decision undermines congressional objective to give the USPTO significant power to revisit and revise earlier patent grants. By permitting the Fifth Circuit timeline, the board's final decision on patentability on the basis of an unrelated threshold determination and that enforcing 314(d) in accordance with this broad literal terms furthers congressional efforts to improve patent quality by focusing judicial review on the merits of the patentability determination, the only issue that matters to the patent system as whole.

      They also argued that, finally, the Fifth Circuit's interpretation of 314(d) does not meaningfully serve the purpose of Section 315(b)'s time bar and that the purpose of the time bar in related provisions is not to prevent the PTO from reconsidering validity of a particular patent but manage the burden on patent owners and minimize the wasted resources that duplicative judicial and administrative proceedings might entail. And if vacating the board's final written decision on patent validity after arguably duplicative proceedings have been completed, based on the Court’s determination that proper application of 315(b) would have prevented those proceedings, does not further that purpose.

      Now, for the respondent's briefs. The respondent identified the salient issues in this case pointing out that the case concerns important issues about administrative law and judicial power. Characterizing the petitioner and government arguments as Congress delegating judicial function to an administrative agency, giving that agency unfettered discretion, to say what the law is, and then instructing that no Article III court ever at any level may review the agency's interpretation of the statutory limits on its own power.

      Respondent argues that the petitioner and government are wrong, that under 315(b), Congress placed a clear limit on the PTO's authority and nothing in 314(d) suggests that Congress left the agency to be the sole arbiter of its own jurisdiction, and that if Congress genuinely intended such an extraordinary departure from the most traditional norms of judicial review, one would expect to see the intent reflected in the clearest possible fashion.

      Yet, nothing in the AIA remotely surpasses that threshold and respondent offered the following arguments to support its position. First, respondent relies on the strong traditional presumption favoring judicial review and that the presumption cannot be overcome without a compelling showing, and that judicial review is necessary to check executive action and secure the separation of powers to ensure that agencies respect statutory limits on their authority.

      Also, that Congress rarely instructs agencies to follow certain rules while leaving the agency unchecked to enforce those limits. Respondent points out that those same presumptions have codified in the APA which broadly authorizes injured parties to seek judicial recourse for unlawful agency action. Given the strength of these presumptions, respondent argues that any presumption -- argues that any ambiguity in the law should be construed to preserve Article III authority. Judicial review is not cut off if the statute is susceptible to any contrary reading.

     

      Second, respondent argues that every relevant fact that makes clear that the courts have the authority to review the PTO's construction of 315(b), nothing in 314(d), for closing a judiciary's role in cabining the agency to its proper bounds. They argue that the proper outcome is clear from the straightforward reading of the operative text that Section 314(d)'s plain text limits its focus to the director's single determination, quote, "under that section," and that the determination is found in 314(a), not 315(b), which numerically is not under that section. And if Congress wished to capture other limits on the agency authority, it would've extended 314(d) to any determination under this chapter rather than under this section, and that Congress used the different formulation repeatedly throughout Chapter 31 and there's no basis to think that the choice was not deliberate.

 

      They argue that this message is reinforced by a different phrase that Congress employed in 314 and 315. While the former grants the Director discretion to make a decision, the latter is an outright ban on agency authority rendering 314(d)'s language a poor fit for Section 315(b)’s absolute prohibition on agency action. Also, that Section 314(d)'s plain language interpretation is confirmed by its context and structure.

 

      And that makes little sense for Congress to place a no appeal provision in 314 if it wanted to capture determinations made in other sections, and that the better explanation, especially in light of Congress's careful choice of the term "under this section," is that Congress was focused on the initial merits determination found in 314(a), not statutory limits imposed elsewhere in the chapter, and that Congress would not articulate a series of detailed, precise limits on agency authority while simultaneously abrogating judiciary's traditional role in enforcing those limits.

 

      Likewise, they argue there is no reason to think that Congress would delegate these particular legal issues to PTAB judges. Prohibition in 315(b) implicate legal issues of general applicability. It did not implicate patent specific knowledge, and there's no reason to think that PTAB judges would outperform Article III judges and say what that law is, and that a broad ban on judicial review is also inconsistent with Section 319, which broadly authorizes a full appeal from the agency's final written decision. Any party dissatisfied with the final decision may appeal, and Congress did not place any limits on the subjects eligible for appellate challenge.

 

      And this is consistent with the merger doctrine and the APA Section 704, both of which permit parties to raise interlocutory issues upon a final order. Further, parties can challenge the agency's indication of the wrong statute to invalidate a patent. Surely, parties can also challenge the agency's invocation of the wrong petition to institute review.

 

      In each instance, the agency exceeds its statutory authority, and a judicial review is necessary to cabin the agency to its proper bounds. They argue that a sweeping reading of 314(d) is also incompatible with the course directive that jurisdictional rules must be clear and that respondent's rule is clear, workable, and predictable. It isolates the agency's preliminary merits determination under Section 314(a), just as 314(d) directs and leaves all other questions subject to traditional appellate review.

 

      They argue that the government and petitioner proposed rule only creates uncertainty and confusion. Under that theory, courts must determine which provisions of the AIA are sufficiently, quote, "close," whatever that means, to the Section 314(a) determination. There's no clear yardstick for measuring that kind of theoretical concept. The results would be unprincipled, unworkable, generate unnecessary litigation at jurisdictional stage, the one stage where clarity and certainty is most prized Article III disputes.

 

      They also argue that this court has already rejected the foundation of the government in petitioner's argument in SAS, which confirmed that the Fifth Circuit was correct in Wi-Fi One, that the agency does not have unreviewable authority to construe the outer limits of its own power. There was no indication, much less a clear convincing one, that Congress stripped the courts of their traditional reviewing function. And Cuozzo correctly understood limits to 314(d) is barred in the institution's decision under Section 314(a), not the director's interpretation of the entire statutory framework, and that nothing in the government or petitioner brief cast any doubt on those core propositions.

 

Now, before I go into the oral argument, a few general observations. The justices were very active in their questions. And it is interesting to note that they didn't appear to be as wedded to the presumption of judicial review as one might've expected, or at least as I might've expected. The arguments being made by each side can be generally characterized as either the one-year time bar is insignificant or, as the petitioner and government argue, merely a form selection provision or it is what it appears to be by its plain language, a statute of repose.

 

As we will see, some of the justices seem to be amenable to the former characterization, surprisingly. Also, there is much discussion of Cuozzo and SAS decisions in the oral argument. Petitioner, Thryv, Inc., was represented by Adam Charnes. The government was represented by Jonathan Ellis, assistant to the DOJ Solicitor General. And the respondent, Click-To-Call, was represented by Daniel Geyser.

 

Petitioner's argument: So Mr. Charnes opened up with stating that the text of the AIA statutory history, the statute's policy goals, and the courts Cuozzo decision all confirmed that 314(d) preclude judicial review of the director's time bar determination under 315(b). He then articulated why these factors support his reading of the statute.

 

One, the provision refers to the determination to institute rather than whether there is a reasonable likelihood that petitioner would prevail in the IPR, focusing on the institution decision as a more broadly-defined aspect of the preclusion of the PL subdivision of Section 314. He then points out that 314 instructs the director to, quote, "determine whether to institute an inter parte review under this chapter and consider patent owner's response in deciding whether to institute," and concludes from this that the text that the statute makes clear that the determination to institute under 314 requires consideration of the prerequisites in the entire chapter. He goes on to conclude that 314(d) provision that the institution determination cannot be judicially reviewed subsumes all of the prerequisites and that those prerequisites, including 315(b) time bar, cannot be appealed.

 

      Next, argues that the statutory history supports petitioner's position, specifically referring to the provisions of the chapter referring to former Section 312, inter partes reexam now appealed where Congress limited judicial review to specific prerequisite, the substantial new question of patentability. He goes on to point out that by comparison, 314(d) is broader, covering the institution decision as a whole instead of just a reasonable likelihood determination. He next argued that the Court in Cuozzo holding that the prerequisite of particularity was closely related to the preliminary patentability determination and the institution decision and that 315(b) is closely related, similarly, so under Cuozzo, petitioner's reading of 314(d) prevails.

     

      Justice Kavanaugh then pointed to the dissent in Cuozzo, noting that the interpretation in Cuozzo does not enable the agency to act outside its statutory limits and repeated the same, quote, “shenanigans” reference that may be properly reviewable in Cuozzo.

 

      Here is where the petitioner argument, while appearing reasonable, in my opinion, is a stretch. Petitioner's position on its shenanigan exception in Cuozzo first stated that, well, if the board invalidates the patent on grounds that are unauthorized within the scope of an IPR, that would be a reviewable shenanigan. Okay, so far. But then the petitioner argues that 315(d) is not only a merits determination but is also not what its plain language states, that it is not a statute of repose, but rather it's a limited form selection provision. And, again, in my opinion, nice try.

 

      Justice Gorsuch then jumped in with a hypothetical that a person tried to kill a patent numerous times and failed to do so. But then a director politically bent on killing patents does so even though the petition is time barred and questions whether, under the petitioner's theory, it would not be a shenanigan that the court could review.

 

      Petitioner had some difficulty with responding as to whether it was a shenanigan or not but stuck to the position that it would not be appealable and might be appropriate for mandamus relief. Justice Gorsuch then pressed on to suggest that only mandamus relief would be available in such egregious circumstances, and then went on to inquire about petitioner's understanding of the presumption of judicial review.

 

      Justice Gorsuch then referred to the earlier case oral argument concerning judicial review earlier in the day and the separation of powers rationale that ensure people are not subject to the whimsical executive decisions. Petitioner responded by saying that separation of powers requires the Court to respect Congress's withdrawal of jurisdiction to the courts, as well as implying jurisdiction where it should exist, arguing further that in this instance, being as characterized by petitioner a forum selection provision, the petitioner could challenge validity in court or the Director could institute an ex parte reexam under 303.

 

      Justice Ginsburg then referred to the SAS case decision that 314(d) precludes judicial review, only at the board's initial determination under 314(a), only of that, that there is a reasonable likelihood that the claims are unpatentable and that the appealability preclusion of 314(d) is limited to the 314(a) initial determination. Petitioner argued that SAS was limited to the facts, only concerned with whether the merits of all challenged claims were determined in the final, written decision. Justice Ginsburg asked whether petitioner thought the sentence in SAS was wrong. Petitioner said well, not wrong, but just that the Cuozzo issue did not have to be addressed more broadly in the context of SAS's facts.

 

      Justice Kavanaugh then challenged the petitioner that petitioner is saying it is wrong, at least as to the use of the word only. Petitioner responded by saying it's not the only basis that the court explained in Cuozzo.

 

      Now, for the government argument. Mr. Ellis, on behalf of the government, focused on a congressional purpose behind IPRs, namely to revisit issued patents, to cancel unpatentable claims, and that it is a two-step process, that is institution and trial, and that the efficiency of agency and parties alike act -- for efficiency of agency of parties alike, it provides for judicial review of the final patentability analysis and final written decision after trial. He then went on to say that respondent's characterization of 314(d) is inconsistent with the plain language of the provision and within the context of the chapter, the statutory history and the course decision in Cuozzo and, therefore, incorrect and that the challenges directed to the institution decision, which 314(d) deems unappealable.

 

      Chief Justice Roberts asked whether the separation of powers question posited earlier is of minor consequence or as the Chief Justice stated, quote, "small potatoes," and that in the larger scheme of things, there are various avenues to get to the heart of the matter, and that is the question of patent validity. Mr. Ellis responded that he agreed that the patentability analysis would be reviewed and could be reviewed by the director at any time.

 

      He then went on to address Justice Gorsuch's hypothetical, pointing out that there would be judicial review at the end of the process. Justice Gorsuch pointed out that the question of whether the institution was time barred would not be reviewable and that the patent would be killed. Mr. Ellis agreed but responded that there are other avenues available to the Director that could result in killing the patent as well. Justice Gorsuch then said, “There are a million things that could happen, but this is what happened, and we can't review it, right? And the patent is now killed, and there is no way to review it on the basis of its timeliness.”

 

      Justice Sotomayor then asked about the situation where it is learned during the proceeding, and that would not be appealable. Mr. Ellis agreed it was not appealable but that the board can act on newly discovered information to vacate the institution decision. Justice Alito offered that the government has a strong position with Cuozzo, but how does it square with the SAS decision? Mr. Ellis addressed the issue by first saying that the sentence in SAS was not wrong but just incomplete. And since SAS dealt with the final determination, it did not need to, nor did it address Cuozzo, the Cuozzo issue.

 

      Justice Breyer asked how to reconcile Cuozzo and SAS in terms of the closely related question and whether 315(b) is closely related under Cuozzo or closely related under SAS. Mr. Ellis responded by saying it is closely related to institution. Justice Breyer then essentially asked where is the dividing line, to which Mr. Ellis responded that you should apply the provision as written.

 

      Justice Gorsuch then asked about the distinction between Executive Branch discretion to evaluate merits of claims but traditionally, statutes of limitation are clear and written in law to afford judicial rights to citizens. Mr. Ellis then reiterated his position that it's not a statute of repose but rather a form selection provision. Justice Gorsuch then pointed out that there is always a traditional distinction in terms of the how close governing judicial review. Justice Kavanaugh then pressed the issue of the provision's, quote, "dissection," close quote, language as to opposed to this chapter, which the Justice suggested if it said that, might resolve the issue.

 

      Mr. Ellis responded that the language is used interchangeably in the chapter and within the context of the statute, and that there is no basis to restrict in such a manner. Justice Kavanaugh then asked whether it is ambiguous. Mr. Ellis responded that it is not, and it was a question addressing -- and that it was the question addressed in Cuozzo regarding whether interlocutory appeal or final written decision appeal, and that Justice Alito's dissent in Cuozzo said as much with respect to 315(b).

     

      Justice Kagan suggested that Cuozzo referred to the substantive closely related rather than the timing issues. Mr. Ellis replied that elsewhere in Cuozzo, it refers to interpretation of statutes, plural, related to the PTAB decision to institute the IPR. Justice Ginsburg then asked whether Cuozzo’s characterization of the issue is a minor statutory technicality as opposed to a time bar distinguishes the case. Mr. Ellis responded that it fits into the same bucket because it doesn't actually preclude the director from reaching a final decision, and that Cuozzo stands for the proposition that you shouldn't throw out the board's final, written decision on patentability, the major question, on a ground that's completely unrelated to the decisions, like 315(b) is.

 

      And now for the respondent's oral argument by Mr. Geyser. Mr. Geyser started out by pointing out that petitioner's position is that Congress delegated the judicial function to an administrative agency with unfettered discretion to say what the law is and then instructed that no Article III court at any time at any level may review the agency's interpretation of the statutory limits of its own power.

 

      Chief Justice Roberts, agreeing that the separation of powers is important and should be vigilantly guarded, questioned whether, in this case, it is of no great moment and that there are numerous ways that the question of patentability can be achieved and essentially bind the argument that this is the choice of form provision.

 

      Mr. Geyser responded by saying Congress putting into the act to divide the authority between the courts and the agency and is a significant protection for patent owners. Chief Justice Roberts then reiterated that it is not a question of whether the ultimate question of patentability will be reached, just a question of one procedure or another. And then the Chief Justice said that's not what we were fighting for at Yorktown. Mr. Geyser replied that Congress viewed it otherwise with the one-year deadline.

 

      Justice Kagan questioned whether another party could bring a new petition, and wouldn't it be silly to have it start all over again since the board found invalidity? Mr. Geyser's response was that 25 percent of invalidity determinations are reversed and that Congress thought it important enough to include the time bar.

 

      Justice Ginsburg then asked whether it is unseemly to have the entire process and final determination wiped out on the merits to just start all over again with another challenger. Mr. Geyser responded that he disagreed, that in a proper proceeding, the validity can be determined, but Congress -- sorry, is necessary that the IPR be filed in the one-year deadline.

 

      Justice Breyer then questioned whether it is merely trying to correct the mistake in the time of filing. Mr. Geyser responded that the strong presumption favoring judicial review and the construction of the statute is the guide, and that it is exceedingly rare for Congress to enact a highly reticulated scheme that restricts the agency's core authority for significant policy objectives and then says, “Agency, you go figure out what those provisions mean.”

 

      Justice Kagan agrees, but then questioned the strict limitation in this section. Mr. Geyser responds by saying ignoring it renders it meaningless and that Congress knows how to distinguish section from chapter. Justices Kagan and Kavanaugh then focused on whether respondent's narrow reading renders the issue meaningless.

 

      Mr. Geyser responds that he didn't think Congress looked at it as some minor statutory technicality, and then addresses Cuozzo and SAS, pointing out that the question of particularity in Cuozzo is very different from the prerequisite of the time bar in 315(b). There is then discussion back and forth over the fact that ex parte reexam could accomplish the patentability determination, and Mr. Geyser clearly delineates the differences in the two proceedings, which is on the one hand, adversarial in IPRs, and on the other hand, more akin to cooperative nature of the examination during prosecution.

 

      Mr. Geyser finishes by pointing out that where Congress wants to preclude Article III review, it does so with language much clearer than that which is found in 314(d). And now, I will stop here and answer any questions.

 

Wesley Hodges:  Thank you so much, Rob, for that excellent presentation. And while we wait for any audience questions, Rob, I do want to ask you, what do you think is the driving issue for the justices as they decide on this case?

 

Robert J. Rando:  Well, I have some thoughts, which I can go through, but I think at the end of the day, the driving issue will be the presumption of judicial review and how much the justices weigh that with respect to the determination of the statutory interpretation issues. One of the interesting issues here is that each of those provisions are pretty clear on their face, but trying to integrate them and reconcile them within the context of this question is no easy task. But, again, I think ultimately it will come down to the adherence to or relinquishment of the presumption of judicial review.

 

Wesley Hodges:  Thank you, Rob. Seeing that there's no more questions, Rob, is there anything else you'd like to dive in on or shine more light from your remarks?

 

Robert J. Rando:  Sure. I have some final thoughts. Although, I hate to do prognostications, it kind of worked out okay for me with the recent decision in NantKwest, so here I go. I would say this. Based on the justices' questions, it does not appear that this case will break down along strict ideological lines, right and left. It appears that Justice Gorsuch is troubled by ignoring the plain language of 315(b) as one of statute of limitations rather than choice of forum.

 

      Chief Justice Roberts seems impressed by the alternative avenues for challenging validity, minimizing the end part of 315(b). Justices Ginsburg, along with Kagan, seemed concerned with do-overs when the invalidity has been determined. Justice Kavanaugh appears to be focused on the statutory language of 315(b) and 314(d). Justices Alito and Breyer are focused on reconciling Cuozzo and SAS, as are the other justices as well.

 

      I would suggest that Sotomayor seems concerned with the language of 314 and also its implementation. And, of course, Justice Thomas is an unknown, except one would think his views on separation of powers and judicial review will influence his decision.

 

And that kind of presumption of judicial review, although not appearing to be the decisive factor, when push comes to shove, I believe that the ultimate decision—which will likely be close, maybe 5-4, 6-3 and I'm not sure that we can really identify the five and the four, the six and the three, give or take one or two—will rest largely on the presumption not being overcome by clear and convincing evidence of congressional intent or purpose, based upon the language of the statutory provisions and the AIA.

 

      And that's what I have.

 

Wesley Hodges:  Thank you, Rob. That was a very thorough and excellent explanation of the case, and we really do appreciate your thoughts on how you see this moving forward. On behalf of The Federalist Society, I would like to thank you for the benefit of your valuable time and expertise. We welcome all listener feedback by email at info@fedsoc.org. Thank you all for joining us for the call. We are now adjourned.

 

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