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No Judicial Review of Certain Patent Office
Decisions, Supreme Court Holds
April 28, 2020
In 2011, Congress enacted major patent reform in the Lcahy -Smith America Invents Act (AIA). The AIA,
among other things, created inter partes f evie (IPR), an adversarial procedure during which the U.S.
Patent & Trademark Office's (PTO's) Patent Trial & Appeal Board (PTAB) reviews the validity of issued
patents. In particular, IPR allows any person, other than the patentee, to peotion the PTAB for review of a
patent. After receiving a petition, the PTAB may institute an IPR if it detenrfincs that there is a
reasonable likelihood that the petitioner would prevail. However, 35 ULS.C. § 3 15(b) (the so-called
time-bar) provides that the PTAB may not institute an IPR if the petition is filed more than 1 year after
the date on which the petitioner ... is served with a complaint alleging infringement of the patent. Under
35 US.C. § 314(d) (the so-called no-appeal provision), moreover, the PTAB's determination to institute
an IPR under this section shall be final and nonappealable.
In Thryv, Inc. v. Click-to-Call Technologies, LP, decided on April 20, 2020, the Supreme Court intcrprcted
the no-appeal provision broadly by holding that the PTAB's determination that an IPR is not time-barred
falls within § 314(d) and therefore may not be appealed. (The case was previewed before argument in this
CRS sidebar.) The decision in Click-to-Call may have considerable implications for the breadth of the
PTAB's authority moving forward.
Legal Background
Inter Partes Review
Under 3 5 U. S C. 3 11, any person, other than the patentee, may potition the PTAB to review an issued
patent's validity on certain grounds. The petitioner may assert, for example, that the patented invention
would have been obviotis, and thus a patent should not have been issued. The patent owner may then filc
a preliminary response. The PTAB dcides, based on the petition and preliminary response, whether
there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the [patent]
claims challenged in the petition. If the PTAB dctcrmines that there is a reasonable likelihood that the
petitioner will prevail, it may formally institute an IPR.
Congressional Research Service
https://crsreports.congress.gov
LSB10454
CRS LegMi Sidebar
Prepared for Members and
Committees ot Congress ...........................................................................................................................................................................................................](ViewImageLocal?handle=hein.crs/govdaex0001&div=1&collection=&method=preview&ext=.png&size=3)
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