Shapiro Arato Bach Files Supreme Court Amicus Brief Supporting Judicial Review of Timeliness of Inter Partes Reviews

On November 4, 2019, Shapiro Arato Bach filed a brief in the United States Supreme Court for Power Integrations, Inc. as amicus curiae in support of affirmance in Thryv, Inc. f/k/a Dex Media, Inc. v. Click-to-Call Technologies, LP, et al., No. 18-916.  This case presents the Supreme Court with yet another question concerning the inter partes review (IPR) procedure through which the Patent Trial and Appeal Board (PTAB) decides challenges to the validity of issued patents.

Under 35 U.S.C. § 315(b), an IPR petition seeking to invalidate a patent is time-barred if filed more than one year after the petitioner (or real party in interest or privy of the petitioner) is served with a complaint alleging infringement of that patent.  In the case before the Supreme Court, Thryv’s predecessor had filed an IPR challenging Click-to-Call’s patent, and over Click-to-Call’s objection that the IPR was time-barred, the PTAB instituted the IPR and invalidated the patent.  On appeal, the Federal Circuit disagreed with the PTAB’s interpretation of § 315(b) and vacated the IPR as time-barred.

In the Supreme Court, Thryv argues that the Federal Circuit lacked jurisdiction over the appeal because a separate statute, 35 U.S.C. § 314(d), provides that the PTAB’s “determination . . . whether to institute an [IPR] under this section shall be final and nonappealable.”  Click-to-Call argues that the PTAB’s application of § 315(b) is not the sort of determination covered by § 314(d).

This question has attracted the attention of over a dozen amici curiae, including competitors of our client Power Integrations.  These competitors argued, among other things, that judicial review of PTAB time-bar determinations would save invalid patents on procedural grounds and increase the expense of patent litigation.  Significantly, they pointed to their litigation against Power Integrations as an example of these problems, as the Federal Circuit had dismissed their IPRs against a Power Integrations patent as time-barred.

In the amicus brief, we responded that PTAB invalidity rulings were not sufficiently reliable to be preserved at all costs, and that enforcing the § 315(b) time bar (including through judicial review) was necessary to prevent serial challenges to valid patents.  We further argued that the Power Integrations litigation illustrated these points, since the competitor-amici had failed in three previous attempts to invalidate Power Integrations’ patent, and the Federal Circuit properly denied them a fourth bite at the apple.  Finally, we noted that while the competitors contended that the PTO could circumvent such Federal Circuit rulings by invalidating patents through ex parte reexamination, that conclusion was debatable and provided no reason to ignore statutory limits on the distinct IPR procedure.

Partner Alexandra A.E. Shapiro and Fabien M. Thayamballi co-authored the brief with counsel from Fish & Richardson P.C., a copy of which is available here.