Monday, April 20, 2020

Supreme Court vacates CAFC decision in Thryv, Inc. v. Click-To-Call Technologies, thereby killing off Wi-Fi One, LLC v. Broadcom Corp

As the Supreme Court majority noted:

Thereafter, in another case, the en banc Federal Circuit held that “time-bar determinations under §315(b) are appealable” notwithstanding §314(d). Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1367 (2018). The majority opinion construed §314(d)’s reference to the determination whether to institute inter partes review “under this section” as trained on the likelihood-of-success requirement stated in §314(a). Id., at 1372. The §315(b) timeliness determination, the majority concluded, “is not ‘closely related’ to the institution decision addressed in §314(a).” Id., at 1374 (quoting Cuozzo, 579 U. S., at ___ (slip op., at 12)). The majority therefore held that for §315(b) appeals, §314(d) does not displace the usual presumption favoring judicial review of agency action. Wi-Fi One, 878 F. 3d, at 1374–1375. In a concurring opinion, Judge O’Malley emphasized a “simpler” basis for the same conclusion. Id., at 1375. In her view, §314(d) shields from review only the agency’s assessment of a petition’s “substantive adequacy,” not questions about the agency’s “authority to act.” Id., at 1376.

The ending text of the Supreme Court decision:

Click-to-Call homes in on a single sentence from SAS Institute’s reviewability discussion: “Cuozzo concluded that §314(d) precludes judicial review only of the Director’s ‘initial determination’ under §314(a) that ‘there is a “reason- able likelihood” that the claims are unpatentable on the grounds asserted’ and review is therefore justified.” Id., at ___ (slip op., at 13) (quoting Cuozzo, 579 U. S., at ___ (slip op., at 9)). But that sentence’s account of Cuozzo is incomplete. Recall that Cuozzo itself applied §314(d)’s appeal bar to a challenge on grounds other than §314(a). See supra, at 10. To understand how far beyond §314(a) the bar on judicial review extends, we look to the statute and Cuozzo; for the reasons stated above, they establish that §314(d) bars challenges resting on §315(b).[8]


Click-to-Call presses an alternative reason why the Board’s ruling on its §315(b) objection is appealable. The Board’s final written decision addressed the §315(b) issue, so Click-to-Call argues that it may appeal under §319, which authorizes appeal from the final written decision. But even labeled as an appeal from the final written decision, Click-to-Call’s attempt to overturn the Board’s §315(b) ruling is still barred by §314(d). Because §315(b)’s sole office is to govern institution, Click-to-Call’s contention remains, essentially, that the agency should have refused to institute inter partes review. As explained, §314(d) makes that contention unreviewable.

*  *  *

For the reasons stated, we vacate the judgment of the United States Court of Appeals for the Federal Circuit and remand the case with instructions to dismiss for lack of appellate jurisdiction.

Justice Gorsuch, who dissented, has become the strongest supporter of patent rights on the Supreme Court. In his part V (not joined by Justice Sotomayor), one has the text:

The abdication of our judicial duty comes with a price. The Director of the Patent and Trademark Office is a political appointee. The AIA vests him with unreviewable authority to institute (or not) inter partes review. Nothing would prevent him, it seems, from insulating his favorite firms and industries from this process entirely. Those who are not so fortunate proceed to an administrative “trial” before a panel of agency employees that the Director also has the means to control. The AIA gives the Director the power to select which employees, and how many of them, will hear any particular inter partes challenge. It also gives him the power to decide how much they are paid. And if a panel reaches a result he doesn’t like, the Director claims he may order rehearing before a new panel, of any size, and including even himself.

No one can doubt that this regime favors those with political clout, the powerful and the popular. But what about those who lack the resources or means to influence and maybe even capture a politically guided agency? Consider Mr. DuVal, who 25 years ago, came up with something the Patent Office agreed was novel and useful. His patent survived not only that initial review but a subsequent administrative ex parte review, a lawsuit, and the initiation of another. Yet, now, after the patent has expired, it is challenged in still another administrative proceeding and retroactively expunged by an agency that has, by its own admission, acted unlawfully. That is what happens when power is not balanced against power and executive action goes unchecked by judicial review. Rather than securing incentives to invent, the regime creates incentives to curry favor with officials in Washington.


Two years ago, this Court sanctioned a departure from the constitutional plan, one in which the Executive Branch assumed responsibilities long reserved to the Judiciary. In so doing, we denied inventors the right to have their claims tried before independent judges and juries. Today we compound that error, not only requiring patent owners to try their disputes before employees of a political branch, but limiting their ability to obtain judicial review when those same employees fail or refuse to comply with the law. Nothing in the statue commands this result, and nothing in the Constitution permits it. Respectfully, I dissent.

link to dissent:

link to Ginsburg opinion:


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