U.S. Supreme Court Holds IPR Time Bar Determinations Are Not Appealable

The Decision.  On April 20, 2020, the U.S. Supreme Court ruled that decisions by the Patent Trial and Appeal Board (PTAB) to institute inter partes review (IPR) are not appealable, even if such institution decisions may violate the statutory time bar for filing IPR petitions.

In Thryv, Inc., FKA Dex Media, Inc. v. Click-to-Call Techs., LP, et al., the Supreme Court vacated a decision by the Court of Appeals for the Federal Circuit and held that the PTAB’s decision to institute an IPR of a patent owned by Click-to-Call Technologies was not appealable.  At the Federal Circuit, Click-to-Call had challenged an unfavorable IPR decision on grounds that the IPR was instituted in violation of the statutory one-year time limit for filing IPR petitions set forth in the America Invents Act (“AIA”).   Specifically, an IPR petition may not be instituted if it is filed more than one year after the petitioner has been served with a complaint for patent infringement.  Here, Click-to-Call had argued that a prior suit that had ended in a voluntary dismissal without prejudice made the current IPR petition untimely.

In 2016, the Federal Circuit dismissed Click-to-Call’s appeal for lack of jurisdiction, holding that the AIA bars review of an IPR institution decision.  In a later case decided en banc, Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1367 (Fed. Cir. 2018), the Federal Circuit held that time bar determinations were appealable.  In view of WiFi One, the Federal Circuit granted rehearing on Click-to-Call’s case.  It held that the Patent Trial and Appeal Board erred in instituting IPR review and thus vacated the Board’s decision of unpatentability of the challenged claims.

The Supreme Court granted certiorari to resolve the appealability issue.  The Supreme Court relied on prior precedent, which held that matters closely tied to the application and interpretation of statutes related to the IPR institution decision are not subject to judicial review.  Because the time bar statute expressly governs institution of IPRs, the Court reasoned that judicial review of the PTAB’s decision was improper under that precedent. In view of Congressional intent and the purpose of the AIA, the Court further stated that allowing appeals of time bar determinations would “operate to save bad patent claims.”  Thus, the Court vacated the Federal Circuit’s judgment and remanded with instructions to dismiss the appeal for lack of jurisdiction.

The Takeaways.  There are two notable takeaways from this decision.  First, it confirms that issues regarding the timeliness of an IPR petition must be raised and addressed at the institution stage and will not be revisited on appeal.  This makes it important for patent owners facing an IPR challenge to investigate and raise any potential time-bar issues early in an IPR proceeding.  Second, the Supreme Court declined to address the issue of whether the one-year time bar is triggered by a complaint that is voluntarily dismissed without prejudice, so that issue remains open.  As a result, a defendant that obtains a dismissal without prejudice should be aware that such a dismissal may impact its ability to initiate an IPR challenge in the future.