Supreme Court upholds Patent and Trademark Office discretion for appeals decisions
© WikiMedia (ReubenGBrewer)
Supreme Court upholds Patent and Trademark Office discretion for appeals decisions

The US Supreme Court ruled on Monday that federal patent law does not allow for an appeal of the Patent Trial and Appeal Board’s decision to institute a procedure for challenging the validity of a patent after a finding that a one-year time bar does not apply.

Inter partes review is a process established by the America Invents Act in which a patent challenger can ask the US Patent and Trademark Office (USPTO) to reconsider the validity of an earlier granted patent claim. Thryv had sought such a review of a patent owned by Click-to-Call Technologies but did so, Click-to-Call argued, outside of a one-year time bar of the initial complaint. The Patent Trial and Appeal Board (Board) disagreed with Click-to-Call and instituted review.

Thryv, as well as the government, argued in favor of an “expansive interpretation” of the USPTO’s authority to make decisions about appeals without judicial review. This was a decision Congress made, the government argued, “to maintain the efficiency of the process and ultimately to—to preserve the resources of the agency and the parties, it focused judicial review on the issue that matters most to the system as a whole, the final patentability analysis and the final written decision after trial.”

The Supreme Court agreed on Monday, ruling that the USPTO’s application of the time limit is “closely related to its decision whether to institute inter pares review” and therefore not an appealable decision.

“Allowing [such] appeals would tug against that objective, wasting the resources spent resolving patentability and leaving bad patents enforceable,” Justice Ruth Bader Ginsburg wrote for the 7-2 majority.