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Justices Ponder Reviewability of PTAB Time-Bar Decisions (1)

Dec. 9, 2019, 6:43 PMUpdated: Dec. 9, 2019, 9:45 PM

The U.S. Supreme Court grappled with whether federal courts could review Patent and Trademark Office decisions to review a patent’s validity when the agency determined that the time bar didn’t apply.

Justice Elena Kagan said that allowing courts to second-guess the Patent Trial and Appeal Board’s choice to institute trial could allow the agency and parties to go through administrative proceedings “soup to nuts,” only to have a court throw out the entire process over a missed deadline to challenge “what we know by now is an invalid patent.”

The Dec. 9 arguments in Thryv, Inc. v. Click-To-Call Technologies, LP allowed the high court to weigh arguments over whether statutory language and case law allow parties to appeal PTAB decisions to institute certain validity proceedings.

The case, observers say, could determine the PTO’s scope over its board’s proceedings.

‘Unseemly’ Undoing

The U.S. Court of Appeals for the Federal Circuit in 2018 said that Thryv Inc.'s predecessor was too late in bringing its PTAB challenge against Click-to-Call Technologies LP over U.S. Patent No. No. 5,818,836, covering anonymous voice communication.

Now, the Supreme Court is analyzing a section of the law stating that the decision to institute a proceeding known as an inter partes review is “final and unappealable.” The justices must decide whether the language allows appeals when the PTAB finds the one-year deadline set out in another section of the law doesn’t apply.

Justice Ruth Bader Ginsburg said during arguments that there was something “unseemly” about undoing the board’s decision on a patent’s validity decision rendered on merits because of the time bar.

Justice Neil M. Gorsuch, however, asked what if a party, after trying to invalidate a patent multiple times, falls outside the time limitation to petition for inter partes review, but the PTAB decides to institute anyway.

“You’re telling the court there’s no review of that decision?” Gorsuch asked Adam Charnes, a Kilpatrick Townsend & Stockton LLP partner representing Thryv in its appeal of a decision wiping out a victory over rival Click-to-Call.

Charnes had argued that federal patent law “makes clear” that PTAB decisions to institute inter partes reviews can’t be appealed.

But Click-to-Call counsel Daniel Geyser of Geyser P.C. argued that parties should be able to appeal PTAB time-bar decisions despite patent law language stating that institution decisions are final. The time-bar on an inter partes review is a “safeguard” for patent owner, Geyser said.

The time bar, Geyser added, is a “very important” protection for “a patent owner whose property rights are subject to review in an Article I tribunal,” Geyser said.

The case is: Thryv, Inc., fka Dex Media, Inc., Petitioner vs. Click-To-Call Technologies, LP, U.S., No. 18-916, oral arguments 12/9/19

(Updated with additional reporting)

To contact the reporter on this story: Ian Lopez in Washington at ilopez@bloomberglaw.com

To contact the editors responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com; Keith Perine at kperine@bloomberglaw.com

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