Case No. 18-916 | Fed. Cir.
Preview by Taylor Dowd, Senior Online Editor
The dispute behind this case began in 2001, when Inforocket.Com, Inc. sued Keen, Inc. for infringement of U.S. Patent No. 5,818,836 (“’836 Patent”), which relates to anonymous phone communications. A few years later, the two companies merged, voluntarily dismissed the suit, and changed the resulting company’s name to Ingenio, Inc. In 2011, Click-to-Call Technologies obtained the ’836 Patent and subsequently brought infringement complaints against multiple parties, including Ingenio, which ultimately changed its name to Thryv Inc.
In 2013, Ingenio and other companies filed an inter partes review (“IPR”) petition to challenge the ’836 patent. IPR is a procedure created under the Leahy-Smith America Invents Act (“AIA”) that allows the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) to review patent claims for patentability on limited grounds. In response to the IPR petition, Click-to-Call Technologies argued that it was time-barred because of the 2001 suit. PTAB found that it was not time-barred under 35 U.S.C. § 315(b) because of Keen and Inforocket.Com’s voluntary dismissal, and instituted an IPR, eventually holding the claims unpatentable. Click-to-Call then appealed PTAB’s finding that the IPR petition was timely, and the Federal Circuit held the petition time-barred. Although the Government conceded the misinterpretation of § 315(b), it argued the decision was not reviewable.
The Court will consider whether judicial review of PTAB’s decision to institute an IPR upon a finding that it is not time-barred is statutorily permissible. Under 35 U.S.C. § 314(d), “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” Thryv argues that although there is a presumption of judicial review of agency decisions, here it is overcome by “clear and convincing” indications in the language of the AIA that Congress intended to obviate judicial review. Brief for Petitioner at 13, Thryv Inc. v. Click-To-Call Technologies, LP, No. 18-916 (U.S. filed Sept. 3, 2019). Click-to-Call, however, contends that this presumption, which is also codified in the Administrative Procedure Act, is too strong to be overcome by the statutory language and is supported by statutory context and structure.
The parties also disagree on the implications of Cuozzo Speed Technologies, LLC v. Lee, 136 S.Ct. 2131 (2016), in which the Court explained that § 314(d) precludes judicial review when the rationale for challenging the initiation of an IPR consists of questions “closely tied” to the application of statutes related to the decision to institute an IPR. Cuozzo, 136 S.Ct. at 2141. Thryv claims that because the time bar in § 315(b) is a condition to an IPR, it is a “closely tied” statute and therefore PTAB’s decision is unreviewable under Cuozzo. Click-To-Call argues Cuozzo is too narrow to apply here and that instead, the holding in SAS Institute v. Iancu, 138 S.Ct. 1348 (2018) is instructive, which confirms that “the agency does not have unreviewable authority to construe the outer limits of its own power.” Brief for the Respondent Click-To-Call Technologies, LP at 8, Thryv Inc. v. Click-To-Call Technologies, LP, No. 18-916 (U.S. filed Oct. 28, 2019).
Lastly, while Thryv argues that the general purpose of the AIA supports preclusion of judicial review here because it was intended to promote efficiency, Click-To-Call argues that judicial review reflects the AIA’s purpose because the limitation on agency authority enforces Congress’s calculations concerning the interests of the patent owners.
This case has motivated several amici curiae to weigh in, such as the PTAB Bar Association, which emphasizes that the outcome could affect the reviewability of other PTAB time-bar determinations.