Appeal Bar Dispute Heads to SCOTUS

The SCOTUS has shown an affinity for disputes of the Patent Trial & Appeal Board (PTAB). Today, the Court took up its 5th PTAB dispute in three years granting cert in Dex Media Inc. v. Click-To-Call Technologies, LP.

The underlying dispute in Dex relates to the one-year window of 35 U.S.C. § 315(b). As is well-known, this window precludes AIA trial petitions from a party more than one year after service of a complaint of infringement. Prior to the Federal Circuit’s reversal in Dex (more familiar to practitioners as “Click-to-Call”), the Board had consistently held that where a first-filed complaint (outside the window) was dismissed without prejudice, that the original window trigger becomes a nullity. The Federal Circuit disagreed, holding that the voluntary dismissal of a civil action does not nullify an administrative time bar that is triggered by service of that complaint.

In granting cert, the Court will consider only the the threshold issue of whether 315(b) disputes are even reviewable by the Federal Circuit in view of the appeal bar of 35 U.S.C. § 314(d). That is, the Court will have an opportunity to expand upon the “shenanigans” discussed in Cuozzo Speed Techs. v. Lee that are outside of the 314(d) appeal bar.

From a practitioner perspective, regardless of the outcome here, it is unlikely that current time bar realities will change. This is because, even if the Court were to vacate the CAFC decision, we would be left with the original agency determination — yet, that earlier administrative philosophy has changed. In its Opposition Brief to the cert petition, the USPTO has gone on record to explain that (here):

Since the court of appeals’ decision in this case, the Director of the USPTO has reconsidered the agency’s interpretation of Section 315(b) in light of that decision, and has determined that the court of appeals’ reading reflects the better view of Section 315(b). Accordingly, the agency now agrees that the proper course would have been to decline to institute inter partes review in this case—in which event the Board’s now-vacated final written decision would not have been issued.

Perhaps the best statement of the actual issue to be decided in Dex is found in the WiFi One dissent:

Congress barred judicial review of the Patent and Trademark Office (PTO) Director’s decision to institute inter partes review (IPR) in 35 U.S.C. § 314(d). The majority opinion, however, limits this prohibition to the Director’s assessment of the criteria for instituting review set forth in § 314.

That is, the Court appears to be looking to clarify that the exceptions to the appeal bar, or “shenanigans,” mentioned in Cuozzo as nothing more than traditional administrative law concepts of 5 U.S.C. § 706(2). These include actions that are contrary to constitutional right, power, privilege, or immunity; actions in excess of statutory jurisdiction, authority, or limitations, or short of statutory right; and actions without observance of procedure required by law.  And, unless presented as challenges under the relevant portions of the Administrative Procedure Act (APA), the appeal bar precludes appeals challenging the agency’s interpretation of AIA statutes underlying institution decisions. (as is the case here, and in Cuozzo).

Regardless of the court’s interest, which could just as well be driven by the conservative side of the Court’s concern with the expanding power of the administrative state, WiFi One will be recalibrated.