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Thryv, Inc. v. Click-To-Call Techs., LP

Supreme Court of the United States

December 9, 2019, Argued; April 20, 2020, Decided

No. 18-916.

Opinion

Justice Ginsburg delivered the opinion of the Court. 1

] Inter partes review is an administrative process in which a patent challenger may ask the U. S. Patent and Trademark Office (PTO) to reconsider [*5]  the validity of earlier granted patent claims. This case concerns a statutorily prescribed limitation of the issues a party may raise on appeal from an inter partes review proceeding.

] When presented with a request for inter partes review, the agency must decide whether to institute review. 35 U. S. C. §314. Among other conditions set by statute, if the request comes more than a year after suit against the requesting party for patent infringement, “[a]n inter partes review may not be instituted.” §315(b). “The determination by the [PTO] Director whether to institute an inter partes review under this section shall be final and nonappealable.” §314(d). 2

In this case, the agency instituted inter partes review in response to a petition from Thryv, Inc., resulting in the cancellation of several patent claims. Patent owner Click-to-Call Technologies, LP, appealed, contending that Thryv’s petition was untimely under §315(b).

The question before us: Does §314(d)’s bar on judicial review of the agency’s decision to institute inter partes review preclude Click-to-Call’s appeal? Our answer is yes. ] The agency’s application of §315(b)’s time limit, we hold, is closely related to its decision whether to institute inter partes review and is therefore [*6]  rendered nonappealable by §314(d).

] The Patent and Trademark Office has several ways “to reexamine—and perhaps cancel—a patent claim that it had previously allowed.” Cuozzo Speed Technologies, LLC v. Lee, 579 U. S. ___, ___, 136 S. Ct. 2131, 195 L. Ed. 2d 423, at 433 (2016)). Congress established the procedure at issue here, inter partes review, in the Leahy-Smith America Invents Act (AIA), 125 Stat. 284, enacted in 2011. See 35 U. S. C. §311 et seq. Inter partes review allows third parties to challenge patent claims on grounds of invalidity specified by statute. §311(b).

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2020 U.S. LEXIS 2406 *

Thryv, Inc., fka Dex Media, Inc., Petitioner v. Click-To-Call Technologies, LP, et al.

Notice: The LEXIS pagination of this document is subject to change pending release of the final published version.

Prior History:  [*1] ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

Click-To-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 2018 U.S. App. LEXIS 22839 (Fed. Cir., Aug. 16, 2018)

Disposition: 899 F. 3d 1321, vacated and remanded.

CORE TERMS

patent, inter partes, judicial review, instituted, appeals, challenges, decisions, grounds, nonappealable, reexamination, proceedings, canceling, invention, merits, reasonable likelihood, insulating, quotation, courts, cases, written decision, ex parte, provisions, timeliness, rights, infringement, initiated, inventors, prevail, marks, closely related

Business & Corporate Compliance, Patent Law, US Patent & Trademark Office Proceedings, Reexamination Proceedings, Governments, Legislation, Statute of Limitations, Time Limitations, Patent Law, Appeals, Evidence, Inferences & Presumptions, Presumptions, Rebuttal of Presumptions, Interpretation