Thryv, Inc. v. Click-To-Call Technologies, LP
 | |
| Thryv, Inc. v. Click-To-Call Technologies, LP | |
| Term: 2019 | |
| Important Dates | |
| Argument: December 9, 2019 Decided: April 20, 2020 | |
| Outcome | |
| Vacated and remanded | |
| Vote | |
| 7-2 | |
| Majority | |
| Ruth Bader Ginsburg • Chief Justice John G. Roberts • Stephen Breyer • Elena Kagan • Brett Kavanaugh • Clarence Thomas • Samuel Alito | |
| Dissenting | |
| Neil Gorsuch • Sonia Sotomayor | |
Thryv, Inc. v. Click-To-Call Technologies, LP (originally Dex Media Inc. v. Click-To-Call Technologies, LP) is a 2020 U.S. Supreme Court case that limits judicial review of agency decisions. The court ruled that the Leahy-Smith America Invents Act (AIA) prevents courts from reviewing U.S. Patent and Trade Office interpretations of a law governing time limits for challenging patents. Citing previous decisions, the court decided that Congress intended for courts to stay out of agency decisions about when to begin patent reviews. Justice Ginsburg wrote for the majority that the AIA was supposed to weed out bad patent claims and that allowing challenges like this one would undermine Congress' objective.[1][2] Following the ruling, the Patent Office has more flexibility to decide how strictly to follow the legal time limit placed on patent challenges.
Justice Neil Gorsuch argued in dissent that the decision “carries us another step down the road of ceding core judicial powers to agency officials and leaving the disposition of private rights and liberties to bureaucratic mercy.”[2]
The court heard oral argument in the case on December 9, 2019, during its October 2019-2020 term. The case came on a writ of certiorari to the United States Court of Appeals for the Federal Circuit.
You can review the lower court's opinion here.
Why it matters: The decision to recognize limits on judicial review of these kinds of patent appeals might allow the Patent Trial and Appeal Board to ignore legal limits placed on its authority over patent challenges. The ruling also makes it harder for those who lose patent fights at the U.S. Patent and Trade Office to challenge those administrative decisions in an Article III court. An Article III court is one within the judicial branch created by Congress according to the specifications of the U.S. Constitution. Article III courts often offer more protections for parties challenging agency actions than the adjudication procedures that administrative agencies follow.
Timeline
The following timeline details key events in this case:
- April 20, 2020: The U.S. Supreme Court vacated the ruling of the Federal Circuit and remanded the case. The U.S. Supreme Court court canceled the lower court's opinion and instructed it to dismiss the case for lack of jurisdiction.[2]
- December 9, 2019: The U.S. Supreme Court heard oral argument.
- July 15, 2019: Dex Media, Inc., changed its name to Thryv, Inc.[5]
- June 24, 2019: The U.S. Supreme Court agreed to hear the case.
- January 11, 2019: Dex Media, Inc., the petitioner, filed a petition with the U.S. Supreme Court.
- August 16, 2018: The Federal Circuit vacated the Patent Trial and Appeal Board's decision and remanded the case.
Background
Relevant statutes
35 U.S.C. § 314
35 U.S.C. § 314(d) says:
|
(d) No Appeal.— The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.[6] |
35 U.S.C. § 315
35 U.S.C. § 315(b) says:
|
(b) Patent Owner’s Action.— An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).[7] |
Case history
Initial fight over patent
In 2001, Inforocket.com, Inc. sued Keen, Inc., for infringement of U.S. Patent No. 5,818,836 (the "836 Patent"). Keen then sued Inforocket on other patent infringement charges. In 2003, Inforocket merged with Keen and the charges were dropped. Keen then changed its name to Ingenio, Inc.[3]
Patent changes ownership and leads to other lawsuits
In 2011, Click-To-Call Technologies, LP ("CTC") acquired the 836 Patent. In 2012, CTC filed charges of patent infringement against multiples parties, including Ingenio, in the United States District Court for the Western District of Texas. The litigation was stayed pending inter partes review (IPR) proceedings.[3] The Leahy-Smith America Invents Act (AIA) of 2011 created IPR, a procedure that allows a third party to both challenge a patent claim and request review of the challenge before the Patent Trial and Appeal Board as long as the challenge is filed within a statutory time limit.[3]
During the IPR proceedings, Ingenio merged with Dex Media, Inc.[3]
Dispute over whether courts could review PTAB decisions to begin IPR
In 2013, Ingenio filed an IPR petition with the Patent Trial and Appeal Board (PTAB) challenging the 836 Patent. CTC argued the petition was invalid because of time limitations set by Title 35 U.S.C. § 315(b). The PTAB rejected CTC's argument, ruling Ingenio was not barred from pursuing an IPR review of the 836 Patent. In 2014, the PTAB issued a final written decision in favor of Ingenio holding that 13 specified claims were unpatentable.[3]
CTC appealed to the United States Court of Appeals for the Federal Circuit, asking the court to vacate the PTAB's decision to grant IPR review. In 2015, the Federal Circuit dismissed CTC's petition for lack of jurisdiction. CTC then petitioned the U.S. Supreme Court for review. On June 27, 2016, the U.S. Supreme Court vacated the Federal Circuit's dismissal and remanded the case. On remand, the Federal Circuit dismissed CTC's petition.[3]
CTC asked for an en banc rehearing, which the Federal Circuit granted. On January 8, 2018, the Federal Circuit ruled in a divided en banc opinion that Congress had not intended to prohibit judicial review of IPR decisions. On January 19, 2018, the Federal Circuit vacated its dismissal of CTC's appeal in light of its en banc decision, vacated the Board's 2014 final written decision, and remanded the case to the Board with instructions to dismiss the IPR.[3]
Appeal to the U.S. Supreme Court
On January 11, 2019, Dex Media, Inc. filed a petition with the U.S. Supreme Court to review the case. The petitioner argued that the Federal Circuit was divided on the question of time limits under 35 U.S.C. § 315(b), writing the Supreme Court "has repeatedly granted review in patent cases in light of similar divisions in the Federal Circuit."[3]
On July 15, 2019, Dex Media, Inc., changed its name to Thryv, Inc.[5]
Questions presented
The petitioner presented the following questions to the court:
Questions presented:
|
Oral argument
The U.S. Supreme Court heard oral argument in the case on December 9, 2019.
Audio
- Audio of the oral argument:[8]
Transcript
- Transcript of the oral argument:[9]
Outcome
The U.S. Supreme Court vacated and remanded the Federal Circuit's ruling with a 7-2 vote in favor of Thryv, Inc. The U.S. Supreme Court instructed the Federal Circuit to dismiss the case for lack of jurisdiction.[2]
Justice Ruth Bader Ginsburg delivered the opinion of the court. Chief Justice John G. Roberts and Justices Stephen Breyer, Elena Kagan, and Brett Kavanaugh joined the full opinion. Justices Clarence Thomas and Samuel Alito joined the opinion except for part III-C. Justice Neil Gorsuch wrote a dissenting opinion joined by Justice Sonia Sotomayor for parts I, II, III, and IV.[2]
Opinions
Opinion of the court
A majority of the justices held that the relevant statute prevented courts from reviewing PTAB decisions to start Inter parts review (IPR) review.[2]
In her opinion, Justice Ginsburg wrote:[2]
| “ | Does §314(d)’s bar on judicial review of the agency’s decision to institute inter partes review preclude Click-to-Call’s appeal? Our answer is yes. The agency’s application of §315(b)’s time limit, we hold, is closely related to its decision whether to institute inter partes review and is therefore rendered nonappealable by §314(d).[10] | ” |
Ginsburg argued that this case was similar to Cuozzo Speed Technologies v. Lee (2016), in which the court ruled that parties could not appeal Patent Office decisions to begin IPR review. She wrote that the language of the law limiting judicial review overcomes the general presumption that courts may review agency decisions.[2]
Ginsburg went on to state that the purpose and design of the Leahy-Smith America Invents Act (AIA) aim to provide a system for efficiently weeding out bad patent claims. She claimed that allowing appeals of PTAB decisions to institute IPR review would cut against Congress' objective.[2]
Dissenting opinion
In his dissenting opinion, Justice Gorsuch wrote:[2]
| “ | It might be one thing if Congress clearly ordained this strange result. But it did not. The relevant statute, the presumption of judicial review, and our precedent all point toward allowing, not forbidding, inventors their day in court. Yet, the Court brushes past these warning signs and, in the process, carries us another step down the road of ceding core judicial powers to agency officials and leaving the disposition of private rights and liberties to bureaucratic mercy.[10] | ” |
Gorsuch argued that the court's decision supposes "that the Constitution permits a politically guided agency to revoke an inventor’s property right in an issued patent" and allows "the agency’s decision to stand immune from judicial review ... even though the government now concedes that the patent owner is right and this entire exercise in property-taking-by-bureaucracy was forbidden by law."[2]
Text of the opinion
Read the full opinion here.
Commentary about the case
Pre-decision commentary
- See also: Appointment and removal power
Argument: There might be a constitutional problem if PTAB has unreviewable power
University of Virginia law professor John Duffy argued that the case "presents an important issue concerning the extent to which the Patent and Trademark Office has unreviewable discretion to institute administrative reviews of previously issued patents."[11] He continued, arguing that there is a constitutional problem at the agency: "The claim of unreviewable power on behalf of the PTAB here, coupled with the concession that the administrative decision is wrong on the merits, highlights the constitutional problem at the agency: The government’s position is that these administrative patent judges, though appointed only as 'inferior officers' within the meaning of the Constitution, can render incorrect decisions on significant issues of law that no one in government—not the director of the PTO, not any other officer in the executive branch, and not the judiciary—can overturn."[11]
Argument: There are millions of dollars at stake
The outcome of the case "could affect the efficiency and scope of patent office administrative proceedings, where companies battle over patents that can be worth millions of dollars," according to Ian Lopez, a Bloomberg Law senior reporter.[12]
Post-decision commentary
Argument: Patent owners will be upset by the ruling
Scott Graham, a writer for National Law Journal, argued that the decision "gives the USPTO almost unfettered authority to decide whether a party properly sought review under the America Invents Act." He claimed that the ruling would "surely enrage patent owners."[13]
John Duffy argued in a piece for SCOTUSblog that intellectual property lawyers see Justice Ginsburg as "more favorable to intellectual property rights than many of the other justices" so "Ginsburg’s use of anti-patent rhetoric in the opinion is a terrible sign for attorneys representing patentees."[14]
Argument: Thryv is a small battle in a larger war
John Duffy argued that Justice Gorsuch is "carrying on the tradition of his direct predecessor, Antonin Scalia" with his dissent in this case. Duffy argues that, for Gorsuch, the case is "about the allocation of decisional power in the government, and even in this 'small potatoes' case, he’s trying to enforce some constraints on the administrative state."[14]
Duffy argued that Sotomayor signed onto Gorsuch's dissent because he objected to the majority's decision to go against the presumption of judicial review.[14] Gorsuch tied the presumption that courts could review agency actions unless Congress specifically blocks them to separation of powers principles and said it was a defense against arbitrary government.[14] Duffy concluded that lawyers "seeking to curtail the administrative power of this or other agencies might find Gorsuch’s dissent thrilling to read, but the vote total of 7-2 (the same as in Oil States) is sobering" and "it’s been a rough decade for anyone seeking to curb the Patent Office’s administrative power."[14]
Argument: Thryv is not a big case
John Duffy argued that the ruling was narrow and focused on one kind of patent case at one agency. He also said that "patent attorneys who believe that the Patent Office has unlawfully instituted an inter partes review can get a pretty clear message from Thryv—abandon all hope, or almost all."[14] He wrote that the court did say that it could order the agency to stop unlawful proceedings in extreme cases but that the court aimed this decision at stopping bad patent claims.[14]
See also
External links
- U.S. Supreme Court docket file - Thryv, Inc. v. Click-To-Call Technologies, LP (petitions, motions, briefs, opinions, and attorneys)
- SCOTUSblog case file for Thryv, Inc. v. Click-To-Call Technologies, LP
Footnotes
- ↑ Supreme Court of the United States, “‘’Thryv, Inc. v. Click-To-Call Technologies, LP’’, Brief for Respondent Click-To-Call Technologies, LP,” October 2019
- ↑ 2.00 2.01 2.02 2.03 2.04 2.05 2.06 2.07 2.08 2.09 2.10 2.11 Supreme Court of the United States, "Thryv, Inc. v. Click-To-Call Technologies, LP," April 20, 2020
- ↑ 3.0 3.1 3.2 3.3 3.4 3.5 3.6 3.7 3.8 Supreme Court of the United States, Dex Media Inc. v. Click-To-Call Technologies, LP: "Petition for a writ of certiorari," accessed June 26, 2019
- ↑ 4.0 4.1 Supreme Court of the United States, Dex Media Inc. v. Click-To-Call Technologies, LP: "Questions presented," accessed June 26, 2019
- ↑ 5.0 5.1 Supreme Court of the United States, "Notice of change of entity name of Dex Media, Inc.," accessed September 16, 2019
- ↑ Legal Information Institute, "35 U.S. Code § 314. Institution of inter partes review," accessed June 26, 2019
- ↑ Legal Information Institute, "35 U.S. Code § 315. Relation to other proceedings or actions," accessed June 26, 2019
- ↑ Supreme Court of the United States, "Thryv, Inc. v. Click-To-Call Technologies, LP," argued December 9, 2019
- ↑ Supreme Court of the United States, "Thryv, Inc. v. Click-to-Call Technologies, LP Transcript of Oral Argument," argued December 9, 2019
- ↑ 10.0 10.1 Note: This text is quoted verbatim from the original source. Any inconsistencies are attributable to the original source.
- ↑ 11.0 11.1 SCOTUSblog, "Argument preview: A claim of unreviewable discretion for an agency under a cloud of constitutional doubt," December 2, 2019
- ↑ Bloomberg Law, "Justices to Weigh Patent Board’s Power Over Time-Based Trials," December 9, 2019
- ↑ National Law Journal, "Supreme Court Hands PTO More Power Over AIA Patent Validity Challenges," April 20, 2020
- ↑ 14.0 14.1 14.2 14.3 14.4 14.5 14.6 SCOTUSblog, "Opinion analysis: Supreme Court forecloses judicial review that could save “bad patent claims,” while dissent bemoans a “rough day” for judicial power," April 21, 2020
| |||||||||||