The U.S. Supreme Court in April in Thryv Inc. v. Click-to-Call Technologies LP held that a decision by the Patent Trial and Appeal Board (PTAB) regarding whether an inter partes review (IPR) proceeding is subject to a time bar under 35 U.S.C. § 315(b) is closely related to a decision whether to institute IPR and is therefore nonappealable under Section 314(d).
Thryv directly reversed the decision by the U.S. Court of Appeals for the Federal Circuit in Wi-Fi One LLC v. Broadcom Corp., 878 F. 3d 1364 (Fed. Cir. 2018), which had held that such time bar decisions by the PTAB were appealable and did not fall within the scope of Section 314(d).
Supreme Court Cases in Light of Thryv
In addition to nullifying the Federal Circuit’s jurisprudence on time-bar decisions in Thryv, the Supreme Court granted certiorari, vacated, and remanded three cases in view of Thryv.
Definition of “Covered Business Method”
In Emerson Electric v. SIPCO, No. 19-966 (S. Ct. June 15, 2020), the Supreme Court was asked to consider whether the Federal Circuit improperly overturned the PTAB’s determination that the patent was eligible for review under the covered business method (CBM) program. Emerson suggests that the Federal Circuit will no longer be able to review whether the PTAB properly determines if a patent is a “covered business method” in the future.
Time Bar Following Involuntarily Dismissed Civil Action
In Atlanta Gas Light Co. v. Bennett Regulator Guard Inc., No. 18-999 (S. Ct. April 27, 2020), the Federal Circuit held that the PTAB should not have instituted an IPR of a patent in which there was a complaint filed outside of the one-year limitation that was later dismissed involuntarily. Atlanta Gas Light reinforces that the Federal Circuit should not be addressing what constitutes or does not constitute a time bar under 35 U.S.C. § 315(b).
Time Bar Following Voluntarily Dismissed Civil Action
In Superior Communications Inc. v. Voltstar Techs. Inc., No. 18-1027 (S. Ct. April 27, 2020), the parties initially settled a patent suit which was dismissed without prejudice. Superior later filed a petition for IPR of the same patent, which was instituted over Voltstar’s timeliness objection. On appeal, the Federal Circuit vacated and remanded based on the complaint being served more than one year prior to the filing of the petition. Superior also reinforces that Thryv controls even where a civil action was filed and settled voluntarily outside of the one-year period.
Thryv (and its progeny) are having a ripple effect at the Federal Circuit with respect to its prior and ongoing jurisdiction on what can and cannot be appealed from a PTAB proceeding.
Already, the Federal Circuit has been applying Thryv to limit its own jurisdiction on appeal from the PTAB.
Real Parties in Interest
In ESIP Series 2 LLC v. Puzhen Life USA LLC, 958 F.3d 1378 (Fed. Cir. May 19, 2020), the Federal Circuit followed Thryv and extended preclusion of judicial review under Section 314(d) to a determination by the PTAB concerning the real parties in interest requirement of Sectoin 312(a)(2). ESIP indicates that decisions on “real parties in interest” are related to institution such that judicial review is precluded under Section 314(d).
Motions to Terminate
In Ruiz Food Prods Inc. v. MacroPoint LLC, No. 19-2113 (Fed. Cir. June 24, 2020), the PTAB instituted IPR after a declaratory judgment action was dismissed without prejudice but later granted MacroPoint’s motion to terminate the proceedings without addressing patentability. The Federal Circuit denied Ruiz Food’s appeal under Thryv, holding that the dispute was related to institution. Ruiz Food stands for the proposition that Thryv applies to motions to terminate in addition to institution decisions.
Institution on Remand
In BioDelivery Scis. Int’l v. Aquestive Therapeutics Inc., 935 F.3d 1362 (Fed. Cir. 2019), petition for cert. filed, No.19-1381 (June 16, 2020), the Federal Circuit remanded an IPR to the PTAB with instructions to review all challenged claims under SAS v. Iancu. The PTAB instead terminated the instituted IPRs. The Federal Circuit dismissed the appeal of the termination decisions, holding that it lacked the authority to review those decisions. BioDelivery stands for the proposition that Thryv controls even where the Federal Circuit has remanded an IPR with instruction to review the claims.
Limits on Federal Circuit Jurisdiction
Finally, there also remains additional briefing on other limitations for Federal Circuit jurisdiction.
In Facebook Inc. v. Windy City Innovations LLC, 803 Fed. Appx. 408 (April 30, 2020), the Federal Circuit held that the PTAB should not have allowed a patentee to join itself to an IPR where it was already a party under Section 315(c), and should not have allowed patentee to in add new claims to the IPR through that joinder because Section 315(c) does not authorize the joinder of new issues. The panel is now reconsidering whether it had authority to consider the issue in view of Thryv. While Facebook remains pending, another panel of the Federal Circuit found in Fitbit Inc. v. Valencell Inc., No. 2019-1048, Slip op. at 5 (Fed. Cir. July 8, 2020), that the patent owner’s objection to petitioner’s tardy filing of an IPR petition was not reviewable on appeal under Thryv.
As these cases illustrate, we are seeing that Thryv is being applied to limit appeals not only where an issue addressed in an institution decision is raised, but also when issues raised thereafter in a motion to terminate or on remand from appeal which are closely related to institution decisions are raised. The bar to appellate review in Section 314(d) is proving to be broader and stronger than previously recognized by the Federal Circuit.
This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.
Charles R. Macedo is a partner and Devin Garrity is a law clerk at Amster, Rothstein & Ebenstein LLP, where they practice all facets of intellectual property law, including patent, trademark and copyright law. Macedo has successfully represented petitioner and patent owners at the PTAB, and frequently represents parties and amicus at the Federal Circuit and Supreme Court on important issues related to intellectual property law.