IPR Institution Is Still Unappealable

Thryv, Inc. v. Click-To Call Technologies, LP, et al., 590 U.S. ___, Case No. 18-916 (slip op., April 20, 2020)

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John P. Isacson

IPR petitioner Thryv challenged patent owner Click-To-Call’s patent and several claims were cancelled. Click-To-Call sought judicial review of the IPR institution decision.

Click-To-Call alleged that a 2001 lawsuit between predecessor companies triggered the Section 315(b) one-year limit for filing IPRs after lawsuits. The suit was voluntarily dismissed without prejudice, but Click-To-Call contended that the 2001 lawsuit made the 2013 IPR untimely due to the one-year limit. Slip Op. at 2, 4. The PTAB disagreed with Click-To-Call’s contention and instituted the IPR.

On appeal, the Federal Circuit dismissed Click-To-Call’s appeal for lack a jurisdiction. Thereafter, the Federal Circuit decided Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018) (en banc), where the Federal Circuit decided that time-bar determinations are appealable, and then the Federal Circuit granted a rehearing in the Thryv v. Click-To-Call case. The Federal Circuit then vacated the PTAB’s decision in the 2013 IPR for untimeliness. Slip op. at 4-5.

Upon review, the Supreme Court vacated the Federal Circuit judgment. The Supreme Court reasoned that the PTAB’s decision to institute was “closely tied to the application and interpretation” of the patent statute, rather than a constitutional question, and therefore the bar to appeals under Section 314(d) would control. Slip op. at 7. Thus, the PTAB’s decision to institute the IPR was not appealable.