Supreme Court Oral Argument Review: The Justices Appear Split in Thryv v. Click-to-Call

The Supreme Court heard oral arguments in Thryv v. Click-to-Call Technologies last month. As we previously discussed, the case concerns whether the PTAB’s finding that a petition for IPR was timely filed is reviewable on appeal. If the Justices’ questions at oral arguments are any indication, a split decision is likely.

At issue in the case is Section 314(d) of the Patent Act, which bars appeal of the PTAB’s decision “to institute an inter partes review under this section.” The Justices must decide whether that statute applies to, and thus bars appeal of, the PTAB’s finding that the petitioner timely filed the petition before the end of Section 315(b)’s one-year window.

Thryv, the petitioner, argued first. Thryv had convinced the PTAB that its IPR petition was timely, but the Federal Circuit reversed on appeal. Thus, Thryv argues that the timeliness issue should not be appealable.

Thryv’s position has some support from the Supreme Court’s decision in Cuozzo Speed Technologies v. Lee. There, the Court explained that Section 314(d) precludes appeal of the PTAB’s application of statutes “closely related” to the institution decision.

But Cuozzo left open the possibility of appeal for “shenanigans” by the agency, and Justice Gorsuch asked whether using IPR for “a political mission . . . to kill patents” would count as such a “shenanigan.” Thryv stood firm that the appeal bar would apply even there, though Thryv acknowledged that judicial review via a writ of mandamus might be available.                                                                                        

Justices Ginsburg and Kavanaugh pressed Thryv on the Court’s recent decision in SAS Institute v. Iancu, which characterized Cuozzo as limiting the appeal bar to just the PTAB’s decision whether the petition made sufficiently strong arguments regarding patentability. Thryv agreed that its argument here depends on SAS being wrong about what Cuozzo said.

The federal government argued second. As with Thryv, the federal government argued the finding of whether the petition was timely filed should not be appealable.

Some Justices appeared to disagree about whether the traditional presumption that agency decisions are appealable should apply here. Chief Justice Roberts expressed some doubt that it would since alternatives to IPR are available (e.g., ex parte reexamination), and so the one-year window determines which—not whether—review occurs.

But when the federal government later reiterated that point, Justice Gorsuch quickly responded that “there’s always another way to skin the cat,” but the one-year window “is what Congress wrote in . . . for this cat.” His point was that the rules Congress wrote for IPR matter, even if the rules are different for other proceedings.

Several Justices explored ways that Cuozzo and SAS could be reconciled. Justice Breyer suggested that whether an issue is appealable could turn on how “general and important is it above and beyond this particular proceeding.” Justice Ginsburg wondered whether the rule should distinguish mere technicalities from more substantive issues.

The respondent, Click-to-Call, argued last. As the patent owner, Click-to-Call favored the Federal Circuit’s decision that the one-year window barred Thryv’s IPR petition. Thus, Click-to-Call argued the Federal Circuit should be able to review that issue on appeal.

Chief Justice Roberts again asked whether the traditional presumption in favor of appeal ought to apply. Click-to-Call’s response about the separation of powers did not seem to convince Chief Justice Roberts, who responded, “I don’t think it’s what we were fighting over at Yorktown.”

Justice Kagan stressed that allowing appeal of a finding made at the institution of the proceeding could mean undoing all of the PTAB’s work thereafter. Similarly, Justice Ginsburg observed, “[t]here’s something unseemly about nullifying the determination on the merits.”

Justices Kagan and Kavanaugh suggested that Click-to-Call’s interpretation of the appeal bar would render it needless since it would not prevent any appeal that a party would otherwise raise. Justice Kagan went on to characterize Click-to-Call’s interpretation as creating “the silliest provision.”

Justice Breyer asked, “what’s so terrible” about letting the PTAB institute IPR without allowing appeal. Justice Sotomayor observed that Click-to-Call was asking for the Court to recognize special treatment for decisions instituting IPR since a decision to deny institution of IPR is not appealable.                              

Takeaways

• It remains to be seen how the Justices will ultimately decide this narrow issue. Oral arguments at the Supreme Court only occasionally indicate who will prevail. In this case, what seems clear is that the Justices are divided.
• For IPRs, the main effect of this case will be the efficiency and certainty of the proceeding. Permitting appeal of certain issues decided at institution, such as the one-year window at issue here, might make IPRs a somewhat less reliable way to challenge patents.
• That said, this case is not a crisis for IPRs. Regardless of whether the PTAB has the power to rule on issues like the one-year window without appeal, IPRs will continue to be an attractive option for those accused of infringement.

The Supreme Court’s decision in this case is due next spring. Wolf Greenfield will cover it here.