In a 7-2 decision in Thryv, Inc. v. Click-to-Call Technologies, LP (opinion here), the Supreme Court has determined that the PTO's application of 35 U.S.C. § 315(b), which precludes an IPR from being instituted if 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 patent-infringement complaint, is nonappealable.

By way of background, before an IPR can be instituted, the PTO must ensure that certain statutory requirements are met. Of those requirements is the above noted § 315(b) time bar. If the PTO is satisfied that an IPR petition is timely, and the remaining statutory provisions are similarly met, the IPR is instituted and proceeds to a final written decision, which may be appealed to the Federal Circuit. However, not all aspects of the Board's final written decision are appealable. Under § 314(d), the "determination by the [PTO] whether to institute an inter partes review under this section shall be final and nonappealable." In other words, if the PTO determines not to institute an IPR, that determination is nonappealable.

But what happens if the PTO determines to institute an IPR and the aggrieved patent owner believes that the IPR should have never been instituted in the first place? Before the Supreme Court's decision in Click-to-Call, certain aspects of the PTO's institution authority that were generally unrelated to the IPR's technical merits were appealable (such as the PTO's application of the § 315(b) time bar). Justice Ginsburg, writing for the Click-to-Call majority, concluded that this prior finding of judicial reviewability was incorrect:

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).

As aptly explained by Justice Gorsuch in his dissenting opinion, the path forward as it pertains to judicial reviewability of an IPR's institution decision is far from clear:

Litigants and lower courts will also have to be forgiven for the confusion to come about the meaning of §314(d)'s re¬view bar. Whether it is limited to the §314(a) determina¬tion (as SAS Institute held and parts of Cuozzo suggested) or also reaches to challenges grounded in "closely related" statutes (as other parts of Cuozzo suggested and the Court insists today)—who can say? And even supposing that 'closely related to institution' really is the test we'll apply next time, does anyone know what this judicially concocted formulation even means? Despite three opinions interpreting the same provision in under five years, only one thing is clear: Neither the statute nor our precedent can be counted upon to give the answer. Litigants and lower courts alike will just have to wait and see.

Justice Gorsuch also saw the implications flowing from the majority's opinion as grave, "carri[ng] 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."

Interestingly, it was through the prior reviewability of § 315(b) time-bar issues that the PTO's original interpretation that a time bar was not triggered if a prior patent-infringement complaint was dismissed without prejudice was determined to be incorrect. We now know that a time bar may be triggered even if a previously-filed lawsuit was dismissed without prejudice. While we do not believe that the PTO will change its practice on this issue, following Click-to-Call's holding, could the PTO simply reverse course without any judicial oversight?

Absent a statutory fix, which seems unlikely, "[l]itigants and lower courts alike will just have to wait and see."

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