The US Supreme Court has ruled that appellate review is not available for applications of the inter partes review (IPR) statutory time bar, under which a defendant may not file an IPR petition more than one year after being served with a patent infringement complaint. On April 20, a majority of the Court held in Thryv v. Click-to-Call Technologies that because the time bar establishes a key threshold for the Patent Trial and Appeal Board’s (PTAB’s) decision to institute trial, it falls within the Court’s 2016 opinion in Cuozzo Speed Technologies v. Lee, which blocked the appeal of institution decisions and any matters “closely tied to” institution.
Last August, a divided Federal Circuit held that the voluntary dismissal of a district court complaint without prejudice does not prevent a lawsuit from triggering the statutory time bar for inter partes review (IPR). That ruling followed a series of appellate battles over the issue of whether time-bar decisions may be appealed in the first place. Now, the US Supreme Court has partly granted certiorari as to that decision in Dex Media v. Click-to-Call Technologies, agreeing to address the question of whether time-bar decisions are subject to appellate review but declining to review the Federal Circuit’s holding as to the impact of dismissals without prejudice.
The Federal Circuit has held that the voluntary dismissal of a district court complaint without prejudice does not prevent a lawsuit from triggering the statutory time bar for inter partes review (IPR). In an opinion issued on August 16 in Click-to-Call Technologies v. Ingenio, that central holding was reduced to a brief footnote that was decided 10-2 by the full Federal Circuit, while a three-judge panel ruled that the Patent Trial and Appeal Board’s (PTAB’s) contrary interpretation of the statute governing the time bar (35 USC Section 315(b)) was erroneous.