Developments in Intellectual Property Law: October 1, 2019 -- September 30, 2020

BackgroundThe America Invents Act ("AIA") created IPR, which allows third parties to challenge issued patents by petitioning for the institution of an IPR. 12 Section 314(a) provides that an IPR may not be instituted unless "there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition." 13 Additionally, an IPR may not be instituted if it is filed more than one year after the petitioner has been sued for patent infringement. 14By statute, the Board's "determination" whether to institute an IPR is "final and nonappealable." 15 Only once the Board issues a final written decision on the validity of the challenged claims, "'[a] party dissatisfied with the final written decision . . .may appeal the decision' to the Court of Appeals for the Federal Circuit." 16 B. Factual Background and Procedural HistoryClick-to-Call, owner of U.S. Patent No. 5,818,836 (the "'836 patent"), sued Thryv in 2001 for patent infringement. 17That lawsuit resulted in a voluntary dismissal without prejudice. 18 In 2013, Thryv sought IPR on the '836 patent. 19 Click-to-Call opposed the petition as being untimely under § 315(b), as Thryv filed the petition more than one year after the 2001 complaint. 20 The Board disagreed, asserting that "a complaint dismissed without prejudice does not trigger § 315(b)'s one-year [clock]." 21 The Board subsequently instituted IPR, which resulted in a final written decision rejecting Click-to-Call's § 315(b) untimeliness argument and cancelling thirteen of the patent's claims. 22 Click-to-Call appealed to the Federal Circuit, who dismissed the appeal on determination that § 314(d) precludes jurisdiction over appeals based on § 315(b). 23 Citing the Supreme Court's decision in Cuozzo Speed Technologies, LLC v. Lee, 24 the Supreme Court then "granted certiorari, vacated the judgment, 2022]INTELLECTUAL PROPERTY LAW 957 and remanded." 25On remand, the Federal Circuit dismissed the appeal on the same grounds. 26 Following the second dismissal, "the en banc Federal Circuit held that 'timebar determinations under § 315(b) are appealable' notwithstanding § 314(d)." 27 In light of this decision, the Federal Circuit reheard Thryv and held that the IPR was untimely because the 2001 complaint started the § 315(b)'s one-year clock, even though the complaint was dismissed without prejudice. 28The Supreme Court subsequently granted certiorari to resolve the judicial review issue. 29 C. Justice Ginsburg's Opinion of the CourtIPR institution decisions are generally not appealable pursuant to 35 U.S.C. § 314(d). 30 The Court affirmed this in Cuozzo. 31 More specifically, the Court held that § 314(d) bars appeals "where the grounds for attacking the decision to institute [IPR] consist of questions that are closely tied to the application and interpretation of statutes related to the [institution] decision." 32Applying that standard in Cuozzo, the Court rejected the appeal of the institution decision on the grounds that the petition did not challenge the claims "with particularity," as § 312(a)(3) requires, finding this to be closely tied to the Board's institution decision. 33 In this case, the Court likewise determined that § 315(b)'s time limit is closely tied to the institution decision.Specifically, the Court reasoned that the decision to institute must consider whether the petition is timely. 34 Under Cuozzo and § 314(d), the appeal of an institution decision on the basis that the IPR was untimely is thereby prohibited. 35 In further support of this conclusion, Justice Ginsburg leaned on the policy behind the AIA. 36 Congress created IPR "to weed out bad patent claims efficiently." 37Allowing appeals based on § 315(b) would conflict with that objective by allowing patent owners who lost claims in the IPR to appeal the institution decision, only for the Federal Circuit to undo the Board's decision canceling the bad claims. 38 This would be inefficient and, potentially,