Supreme Court Will Consider Appealability Of The PTAB’s Section 315(b) One-Year Bar Rulings
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  • Supreme Court Will Consider Appealability Of The PTAB’s Section 315(b) One-Year Bar Rulings

    On June 24, 2019, the United States Supreme Court granted certiorari to review whether a decision by the Patent Trial and Appeal Board (PTAB) to institute an inter partes review (IPR) is an appealable decision. 

    Specifically, the Supreme Court will review the decision by the Court of Appeals for the Federal Circuit (CAFC) in Dex Media, Inc. v. Click-to-Call Techs., 899 F.3d 1321 (Fed. Cir. 2018) on the following question:  “Whether 35 U.S.C. § 314(d) permits appeal of the PTAB’s decision to institute an inter partes review upon finding that § 315(b)’s time bar did not apply.”  A decision in this case may potentially impact the appealability of the PTAB’s decision to institute IPR proceedings more generally, an issue which has already flip-flopped within the CAFC. 

    The Supreme Court did not grant certiorari on the second question presented by appellant Click-to-Call:  “Whether 35 U.S.C. § 315(b) bars institution of an inter partes review when the previously served patent infringement complaint, filed more than one year before the IPR petition, had been dismissed without prejudice.”

    The convoluted factual background in this case begins on June 8, 2001, when filed a lawsuit against defendant Keen, Inc. asserting infringement of U.S. Patent No. 5,818,536 (“the ’836 patent”) (“Inforocket Action”).  Keen then brought its own infringement suit against on a different patent (“Keen Action”).  After Inforocket prevailed on a motion for summary judgment of non-infringement in the Keen Action, Keen acquired Inforocket as its wholly-owned subsidiary.  The parties thereafter stipulated to voluntary dismissal of the Inforocket and Keen Actions “without prejudice.”  Keen later changed its name to Ingenio. 

    Appellant Click-to-Call (CTC) subsequently acquired the ’836 patent and, on May 29, 2012, asserted it against Ingenio, among others.  On May 28, 2013, Ingenio filed an IPR petition with the PTAB challenging the validity of the ’836 patent.  In response, CTC argued that Ingenio’s IPR petition was time-barred based on the earlier Inforocket Action against Ingenio’s predecessor-in-interest Keen.  PTAB held that Ingenio was not time-barred under 35 U.S.C. § 315(b) because the Inforocket Action was dismissed voluntarily without prejudice, and instituted the Ingenio IPR.  The PTAB later issued a Final Written Decision in the Ingenio IPR, determining that numerous claims of the ’836 patent were unpatentable.

    CTC appealed the PTAB’s Final Written Decision to the CAFC.  But  before CTC’s appeal was heard, the CAFC issued its opinion in Achates Reference Publ’g, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015), holding that the PTAB’s decision to institute an IPR over a time-bar challenge is not appealable under 35 U.S.C. § 314(d).  In view of this intervening decision, the CAFC dismissed CTC’s appeal for lack of jurisdiction.  CTC petitioned for a writ of certiorari, which the Supreme Court granted, remanding for further consideration in light of its opinion in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016).  While the parties were briefing the issues on remand in the CAFC, the CAFC issued Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018), expressly overruling Achates and holding that time-bar determinations under Section 315(b) are appealable. 

    After its Wi-Fi One decision, the CAFC granted CTC’s petition for rehearing en banc and heard CTC’s time-bar appeal on the merits.  The CAFC then reversed the PTAB’s decision to institute the Ingenio IPR, holding en banc that the one year bar under 35 U.S.C. § 315(b) applies even if the earlier complaint was voluntarily dismissed.  Dex Media, Inc. v. Click-to-Call Techs., 899 F.3d 1321 (Fed. Cir. 2018).  CTC filed a petition for writ of certiorari with the Supreme Court to appeal the CAFC’s decision, which resulted in the Supreme Court’s present grant of certiorari.