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When presented with a request for inter partes review, the agency must decide whether to institute review. 35 U.S.C.S. § 314. Among other conditions set by statute, if the request comes more than a year after suit against the requesting party for patent infringement, an inter partes review may not be instituted. 35 U.S.C.S. § 315(b). The determination by the Director of the United States Patent and Trademark Office whether to institute an inter partes review under this section shall be final and nonappealable. § 314(d).
Entities associated with petitioner Thryv, Inc. sought inter partes review of a patent owned by respondent Click-to-Call Technologies, LP. Click-to-Call countered that the petition was untimely under §315(b). The Patent Trial and Appeal Board (Board) disagreed and instituted review. After proceedings on the merits, the Board issued a final written decision reiterating its §315(b) decision and canceling 13 of the patent's claims as obvious or lacking novelty. Click-to-Call appealed the Board's §315(b) determination. Treating the Board's application of §315(b) as judicially reviewable, the Court of Appeals concluded that the petition was untimely, vacated the Board's decision, and remanded with instructions to dismiss. The United States Supreme Court granted certiorari to resolve the reviewability issue.
Did 35 U.S.C.S. § 314(d) preclude judicial review of the agency’s application of §315(b) time prescription?
The Supreme Court concluded that 35 U.S.C.S. § 314(d)’s bar on judicial review of the agency’s decision to institute inter partes review precluded Click-to-Call’s appeal. According to the Court, the agency’s application of 35 U.S.C.S. § 315(b)’s time limit was closely related to its decision whether to institute inter partes review and was therefore rendered nonappealable by § 314(d). Click-to-Call’s appeal challenged not the manner in which the agency’s review “proceeds” once instituted, but whether the agency should have instituted review at all. The Court averred that this conclusion was strongly reinforced by the statute's purpose and design. Congress designed inter partes review to weed out bad patent claims efficiently. Allowing §315(b) appeals, however, would unwind agency proceedings determining patentability and leave bad patents enforceable.